Design law is often viewed as the poor relation of other forms of intellectual property rights such as patents or trade marks. However, the importance of design protection in appropriate cases should not be underestimated.
The case of Utopia Tableware v BBP Marketing & Ors [2013] EWHC 3483 (IPEC) case demonstrates how even a relatively simple design for something that at first sight might be thought to be a straightforward product can be protectable.
Utopia was a case about a design for a beer glass. The proceedings were started in December 2012 when the claimant sought an interim injunction against the defendants to stop them from selling a rival beer glass design. The claimants relied on allegations of UK unregistered design infringement and also infringement of a registered Community design. They also relied on passing off. The injunction was granted after the judge was satisfied that the claimant's evidence demonstrated that it had a good case and would suffer irreparable damage if sales were not stopped. However, the case took an extraordinary turn of events when it subsequently transpired that the claimant had falsified some of its key evidence to the court when seeking the injunction.
In May 2013, after a further hearing, the court agreed to refer the matter to the Attorney General on the question of whether the conspiracy to fabricate evidence should be the subject of proceedings for contempt of court.
Meantime, notwithstanding its conduct in relation to the interim injunction, the claimant was allowed to bring the design infringement allegations to trial.
UK unregistered design
Dealing firstly with the allegations of UK unregistered design infringement, the court held that the claimant's design for its ASPIRE beer glass was original and that whilst some of the design features claimed for the design were "commonplace" in the relevant design field at the time the design was created, the principal design feature was protected by UK unregistered design. The defendants had admitted to copying the claimant's design so copying was not in issue.
In view of these findings it was inevitable that the court would find that the UK unregistered design right had been infringed. The defendants' glass had been made substantially to the same design as the claimant's unregistered UK design.
Community design
The second claim with which the judge had to deal was the question of whether there was also infringement of the claimant's registered Community design. For these purposes copying was irrelevant. All that mattered was a comparison between the defendant's product and the design as registered.
An attack by the defendants on the validity of the claimant's design based on prior beer glass designs by (amongst others) Peroni and Amstel failed. Applying the "overall impression" test for infringement, the judge was satisfied that the defendants' own glass did not create a different overall impression on the informed user when compared to the registered design.
Comment
The full judgment in this case can be viewed here which also sets out photographs of the various beer glass designs referred to in the case. These illustrate that, where the freedom of the designer is limited when designing products, relatively small differences in designs can be sufficient to confer protection against rivals.
However, given the earlier contempt of court issues which have yet to be adjudicated, it remains to be seen what final relief will be granted in the case and what consequences (if any) may yet flow from the claimant's conduct in relation to the interim injunction.
The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.
