Unregistered design right subsisting in cigarette bin design held to be infringed

In Pendle Metalwares Limited v Walter Page (Safeway’s) Limited (July 27 2012), the High Court has considered whether mounted cigarette bins manufactured by claimant Pendle Metalwares Limited were protected by unregistered design right and Community unregistered design right and, if so, whether those rights had been infringed by cigarette bins sold by the defendants, Walter Page (Safeway’s) Limited and Empteezy Limited. Pendle further claimed that the defendants’ use of photographs in which Pendle claimed copyright of Pendle’s cigarette bins to promote the defendants’ cigarette bins infringed Pendle’s copyright and amounted to passing off.

Two Pendle cigarette bin designs were in issue, Pendle 1 and its replacement Pendle 2, both of which were modified over time and supplied in two different sizes. The defendants admitted that their cigarette bin, which was manufactured to their specifications by a Chinese company, was a copy of Pendle’s cigarette bin, although there was a dispute as to whether the Chinese company was supplied with an example of the Pendle 1 or Pendle 2 design by the defendants. The defendants also claimed that elements of, and modifications to, the designs had been due to their input and, accordingly, they were entitled to be considered joint designers under Section 259(1) of the Copyright Designs and Patents Act 1988. 

Mr Stuart Issacs QC, sitting as a deputy High Court judge, first addressed whether the designs benefited from unregistered design right under Section 213 of the act. Having rejected the defendants’ submissions that they were joint designers with Pendle, the key issues were whether the designs were commonplace and whether any of the features of the designs could not be protected due to the 'must fit' and 'method or principle of construction' exclusions. Restating the established test in Farmers Build Ltd v Carrier Bulk Material Handling Ltd ([1999] RPC 461), the judge considered Pendle 1 to be original in the “copyright sense”, so an assessment as to whether the design was commonplace was required. On the facts, he did not consider that Pendle 1 was sufficiently similar to existing designs in the fields to justify a finding that it was commonplace. 

The judge also rejected the defendants’ arguments in relation to the 'must fit' and 'method or principle of construction' exclusions found in Section 213(3) of the act. Describing the defendants’ arguments as “somewhat opaque”, he considered that none of the interfaces on the design, such as the rear and front plate, needed to be of a particular shape or configuration to perform its function. As to the 'method or principle of construction' exclusion, the judge considered that the exclusion is concerned with claims to design rights in generalised concepts, such as the inclusion of a hopper to catch cigarette waste as part of the design, rather than the actual dimensions of the hopper included in the design.

It was accepted by the defendants that, if unregistered design right was found to subsist in Pendle 1, then it must subsist in Pendle 2, and so the judge turned to the question of infringement. The judge cited the two-step test in C & H Engineering v Klucznik & Sons ([1992] FSR 421), finding on the facts that copying had taken place and that the defendants’ cigarette bin was made substantially to Pendle’s design. Accordingly, the defendants had infringed Pendle’s exclusive right under Section 226(1) of the act to reproduce the design for commerce purposes. The judge further found that the defendants had committed a secondary infringement under Section 227(1) of the act by importing their cigarette bins into the United Kingdom for commercial purposes. Moreover, having heard the evidence, and in particular the allegations of joint designs made by the defendants, the judge thought it appropriate that the infringement should be considered flagrant and, as such, Pendle should be entitled to additional damages under Section 229(3) of the act.

Having dealt with the unregistered design right, the judge then assessed Pendle’s and the defendants’ designs in the context of Community unregistered design right. Under Article 4(1) of the Council Regulation on Community Designs (6/2002), designs are protected if they are new and of novel character. Novelty, per Article 5, requires that no identical design has been made available to the public, which was accepted by the defendants in relation to both designs. The assessment of individual character under Article 6 requires that the overall impression it creates on the informed user differs from the overall impression created by any existing design. The judge noted Sir Robin Jacob’s comments in Dyson v Vax Ltd ([2012] FSR 4) that the informed user is reasonably discriminatory and not the same person as the average consumer in trademark law. On this basis, the judge did not consider that it made a difference whether the informed user was the end user of the cigarette bin or the person to whom the bin is supplied; taking into account the designer’s freedom, he considered that both designs produced a different overall impression and thus were protected by Community unregistered design right. The defendants cited the 'technical function' and 'interconnection' exclusions found in Article 8, in a similar manner to the exclusions raised in relation to unregistered design right, which were rejected by the judge.

As to infringement, the judge had to assess whether the defendants’ designs created a different overall impression on the informed user than the Pendle designs. He agreed with the defendants’ submissions that the defendants’ design did produce a different overall impression to the Pendle 1 design. However, he disagreed in relation to Pendle 2, having found that there was a different overall impression between Pendle 1 and 2. The defendants’ design therefore infringed the Community unregistered design right in the Pendle 2 design. 

The judge concluded by addressing the issues of passing off and copyright infringement arising from the defendants’ use of Pendle’s photos. Once the judge was satisfied that Pendle was the owner of the photographs, it was evident that the copyright in those photographs had been infringed by the defendants actions. The judge further concluded that the use of the Pendle photographs amounted to passing off.

Leigh Smith, McDermott Will & Emery UK LLP, London