Unregistered and registered design rights in beer glass found to be infringed
In Utopia Tableware Ltd v BBP Marketing Ltd ( EWHC 3483 (IPEC), November 12 2013), Utopia Tableware Ltd’s unregistered and registered design rights in a beer glass were found to have been infringed.
Utopia is a manufacturer of beer glasses, one of which - the Aspen - is tall with a narrow waist. Utopia brought infringement proceedings against BBP Marketing Ltd, which also manufactures beer glasses, on account of BBP’s Aspire glass. The infringement proceedings were based on Utopia’s unregistered and registered design rights in the Aspen.
BBP admitted that the external dimensions of the Aspen had been copied to create its Aspire glass. The internal dimensions and the thickness of glass were not copied, however, as BBP’s glass was made of polycarbonate rather than glass. As BBP admitted copying the Aspen glass, the key issue in respect of Utopia’s unregistered and registered design rights was the subsistence or validity of these rights.
Under Section 213(2) of the Copyright Designs and Patents Act 1988, unregistered design right can be claimed in an article or in any aspect of the configuration or shape of that article. Aspects that are original and not commonplace in the relevant design field are protectable by unregistered design rights. Utopia claimed unregistered design rights in a number of aspects of the glass, including its outer and inner profile, its rim and the thickness of the base of the glass.
Utopia had registered the design of the Aspen glass as a UK registered design No 4021276, which it applied for on August 13 2011. The registered design shows the side elevation, top plan and underneath plan of the Aspen glass. Under Section 1B(1) of the Registered Designs Act 1949, for a design to be protected by a right in a registered design, it must be new and of individual character. For the design to be of individual character, it must create a different overall impression on the informed user to the existing design corpus.
Mr Recorder Douglas Campbell, sitting as an enterprise judge in the Intellectual Property Enterprise Court, first addressed the subsistence of the unregistered design rights claimed in the Aspen glass. Applying the test as set out in Famers Build Ltd v Carier Bulk Materials Handling Ltd ( RPC 461), he considered that the outer and inner profile, the rim and the thickness of the base were original in the copyright sense, in that they were not copied from another source. Utopia also claimed rights in relation to the internal volume of the glass but these were rejected. As infringement of unregistered design right requires actual copying, and it was not challenged that the internal profile of the glass was not copied, the judge focused on the outer profile, rim and base. Having found these to be original, he then considered whether they were commonplace in the design field. If they were, unregistered design right would not subsist.
On the question of the relevant design field, the judge noted that he was required to take a broad approach based on the types of designs with which he should expect the notional designer to be familiar in accordance with Lambretta v Teddy Smith ( RPC 6). On this basis, he concluded that the correct design field was for beer glasses generally, rather than beer glasses of a particular profile. A number of glasses, all of which were tall with narrow waists, were cited by BBP as prior art. On an analysis of the prior art, the judge determined that only the outer profile of the Aspen was not commonplace. As copying had been admitted, he further found that the unregistered design right in the outer profile of the glass had been infringed.
With regard to the validity of the registered design, the judge had to consider whether or not the design lacked individual character. Although a lack of novelty was also pleaded, it was not pressed at trial. Before analysing the registered design, the judge noted that, in respect of registered designs, it is the overall impression of the design on the informed user that counts and it is for the court to determine what that design is, based on the design drawings. The informed user, in accordance with Pepsi Co v Grupo Promer ( FSR 5), was determined to have knowledge of the existing design corpus and of the design features found in the design corpus, as well as an interest in the products concerned and a relatively high degree of attention to the relevant products.
The amount of freedom the designer had in respect of the design was of relevance to the question of individual character. The judge concluded that the design freedom was limited to tall beer glasses rather than beer glasses in general. As compared to the existing design corpus, the judge concluded that Utopia’s registered design made a different overall impression on the informed user and was of individual character. Again, given BBP’s admission of copying, it followed that the registered design was also infringed.
As this case concerned both unregistered and registered design rights in the same article, it is an interesting demonstration of the different approaches that a court is required to take in analysing alleged infringement. The case is also an example of the importance of the definition of the relevant design field, both for determining whether an unregistered design is commonplace and the level of design freedom (and ultimately the issue of individual character) in respect of registered designs.
Leigh Smith, McDermott Will & Emery UK LLP, London
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