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You are here: BAILII >> Databases >> Intellectual Property Enterprise Court >> Utopia Tableware Ltd v BBP Marketing Ltd & Anor [2013] EWHC 3483 (IPEC) (12 November 2013) URL: http://www.bailii.org/ew/cases/EWHC/IPEC/2013/3483.html Cite as: [2013] EWHC 3483 (IPEC) |
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CHANCERY DIVISION
INTELLECTUAL PROPERTY ENTERPRISE COURT
110 Fetter Lane, London EC4A 1NL |
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B e f o r e :
Sitting as an Enterprise Judge
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UTOPIA TABLEWARE LIMITED |
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(1) BBP MARKETING LIMITED (2) THE BRITISH BUNG MANUFACTURING COMPANY LIMITED |
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Robert Onslow (instructed by Baxter Caulfield) for the Defendants
Hearing date: 24th September 2013
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Crown Copyright ©
Mr Recorder Douglas Campbell:
Introduction
Previous history of the case
The witnesses
The Claimant's witnesses
The Defendants' witness
The prior art relied upon
The creation of the Claimant's design
The Aspen name
The creation of the Defendants' design
Issues to be decided
(a) Subsistence and ownership of the Claimant's unregistered Vessel Designs.(b) Subsistence and ownership of the Claimant's registered design.
(c) In particular, in relation to the subsistence of the aforesaid designs, whether, by reference to existing products in the field such as the Peroni and Amstel beer glasses:
i. The Vessel Design is commonplace and/or not original; and/or
ii. The Registered Design is not new and does not have individual character.
(d) Whether the Defendants' Aspire glass infringes the Vessel Designs or either of them and/or the Registered Design.
A. Subsistence and ownership of the Claimant's unregistered Vessel Designs
1) "A first Vessel Design subsists in the following aspects of shape and/or configuration of the Claimant's Vessel, each of which has a range of manufacturing tolerances typical of glass products:(a) The shape of the profile of the outer surfaces of the Claimant's Vessel, that profile in particular including, above a waisted section, an elongated tulip shaped section which tapers inwardly as it approaches the rim of the Claimant's Vessel, and(b) The shape of the profile of the inner surfaces of the Claimant's vessel,(c) The shape of the rim connecting the inner and outer surfaces of the Claimant's Vessel, and(d) The thickness of the base of the Claimant's vessel.2) A second Vessel Design subsists in the aspects of the shape and configuration of the Claimant's Vessel set out in (a) above, and in the internal volume of the Claimant's Vessel, each of which has a range of manufacturing tolerances typical of glass products."
Legal context
Assessment
B. Subsistence and ownership of the Claimant's registered design.
C(i). Whether the Claimant's Vessel Design is commonplace and/or not original
Legal context
Analysis
" a reasonably broad approach is called for. What matters are the sort of designs with which a notional designer of the article concerned would be familiar".
(a) The Peroni profile is the most similar to the Claimant's profile, but the Peroni waist looks narrower than the Aspen waist, relative to the width of the brim of the glass in each case; the Peroni rim looks wider relative to the Peroni base, than the Aspen rim is relative to the Aspen base; the Peroni profile above the waist is a cone whereas the Aspen profile curves in as one goes up the side; the Peroni profile has no inward taper near the rim, and the Aspen profile has this slight inward taper.(b) The Amstel profile is further away from the Aspen profile than the Peroni profile is. The Amstel profile has quite a pronounced curvature which Mr Trusler described as an "hourglass" shape. The Amstel profile also has a lower waist than the Aspen profile, and a noticeably different shape below the waist.
(c) The Carlsberg profile is even further away from the Aspen profile than the Amstel profile is. The "hourglass" shape is now even more pronounced, and it also has a lower waist and a more curved base than the Aspen. The Carlsberg profile has no inward taper near the rim, and it has a cone profile above the waist which is similar to that of the Peroni. In both respects it differs from the Aspen profile.
C(ii). Whether the Registered Design is not new and does not have individual character
Legal context
Generally
The informed user
"The aim has been to have a tall, iconic glass which would create more theatre at the point of dispense. I use 'iconic' because it is important for a company to have a unique and identifiable shape for its brand and, as large amounts of money are invested in developing a glass and its launch campaign, it has to be right first time and not leave consumers thinking it is just a copy of another glass already on the market. It is also relevant that at each major brand redesign a new glass will often be launched as part of the wider brand launch, possibly occurring every 2 to 4 years".
How much design freedom did the designer have?
"72. In the specific assessment of the overall impression of the designs at issue on the informed user, who has some awareness of the state of the prior art, the designer's degree of freedom in developing the contested design must be taken into account. the more the designer's freedom in developing the contested design is restricted, the more likely minor differences between the designs at issue will be sufficient to produce a different overall impression on the informed user.
82. In the absence of any specific constraint imposed on the designer, the similarities noted in [79][81] above relate to elements in respect of which the designer was free to develop the contested design. It follows that those similarities will attract the informed user's attention "
33 Therefore, the greater the designer's freedom in developing the challenged design, the less likely it is that minor differences between the designs at issue will be sufficient to produce a different overall impression on an informed user. Conversely, the more the designer's freedom in developing the challenged design is restricted, the more likely minor differences between the designs at issue will be sufficient to produce a different overall impression on an informed user. Therefore, if the designer enjoys a high degree of freedom in developing a design, that reinforces the conclusion that the designs which do not have significant differences produce the same overall impression on an informed user."
The overall impression produced by the Claimant's design
The overall impression produced by the existing design corpus
D(i) Whether the Defendants' Aspire glass infringes the Vessel Designs or either of them
Legal context
Analysis
D(ii) Whether the Defendants' Aspire glass infringes the Registered Design.
Legal context
1. The scope of the protection conferred by a design right shall include any design which does not produce on the informed user a different overall impression.2. In assessing the scope of protection, the degree of freedom of the designer in developing his design shall be taken into consideration.
Analysis
Conclusion