Kohler Mira Ltd v Bristan Group Ltd
| Jurisdiction | England & Wales |
| Judge | His Honour Judge Birss QC |
| Judgment Date | 28 January 2013 |
| Neutral Citation | [2013] EWPCC 2 |
| Docket Number | Case No: CC11P04062 |
| Court | Patents County Court |
| Date | 28 January 2013 |
[2013] EWPCC 2
IN THE PATENTS COUNTY COURT
COMMUNITY DESIGN COURT
Rolls Building
7 Rolls Buildings
Fetter Lane
London EC4A 1NL
His Honour Judge Birss Qc
Case No: CC11P04062
Douglas Campbell (instructed by Wragge & Co.) for the Claimant
Hugo Cuddigan (instructed by Withers & Rogers) for the Defendant
Hearing dates: 27th, 28th November 2012
Approved Judgment
I direct that pursuant to CPR PD 39A para 6.1 no official shorthand note shall be taken of this Judgment and that copies of this version as handed down may be treated as authentic.
| Topic | Paragraph |
| Introduction | 1 |
| The witnesses | 3 |
| Community design right | 8 |
| The law | 12 |
| The facts | 16 |
| RCD 000578463–0002 | 17 |
| Overall impression | 30 |
| Individual character | 35 |
| Infringement | 38 |
| RCD 000578463–0001 | 50 |
| Overall impression | 56 |
| Individual character | 59 |
| Infringement | 61 |
| UK unregistered design right | 66 |
| The law | 66 |
| The facts | 71 |
| Commonplace and the design field | 78 |
| Infringement | 87 |
| Conclusion | 121 |
| Annexes |
Introduction
This is a design case about electric shower units. The claimant (Mira) is represented by Douglas Campbell instructed by Wragge & Co. The defendant (Bristan) is represented by Hugo Cuddigan instructed by Withers & Rogers. Mira relies on two Registered Community Designs (RCDs) Nos. 000578463–0001 and 000578463–0002, and UK unregistered design right (UDR). The UK UDR relied on relates to Mira's "Azora" product. Three Bristan products are alleged to infringe. They are called Glee, Joy and Smile.
Mira contends that all three Bristan products infringe both RCDs and UK unregistered design right. Bristan denies infringement and in the case of the UDR claim, contends the designs were derived independently in any event. Bristan contends that the RCDs lack individual character and are invalid. As for UDR, although Bristan accepts the overall design of the Mira Azora was not commonplace, certain elements of it, when taken independently as Mira do, are said to have been commonplace in the design field in question.
The witnesses
Mira called evidence from Mr David Pixton. He created the Mira designs which are relied on in this action and gave expert evidence directed to the design corpus (relevant to Community design right) and to whether design features were commonplace (relevant to UK UDR). Mr Pixton graduated from North Staffordshire Polytechnic (as it was then known) in 1986 with a BA in Product Design. He joined Mira in 1987 as an industrial designer and has been there ever since. Mr Cuddigan made no criticism of Mr Pixton and submitted he was careful and honest and gave his evidence impartially notwithstanding his employment by the claimant. I agree.
Bristan relied on witness statements from Mr Christopher Samwell, Mr Paul Helme, Mr Roderick Gibbs and Mr Robert Ginsberg. Neither Mr Gibbs nor Mr Ginsberg were cross-examined. Their evidence was concerned with whether two products were on the market (the Sirrus Nimbus shower and the Denia bathroom cabinet respectively).
Mr Samwell gave expert evidence about the design field and whether features were commonplace. He graduated from Leicester Polytechnic (as it was then known) in 1976 with a BA in Industrial Design with Engineering and then with an MA in the same subject in 1978. Since then Mr Samwell worked in a series of design consultancies and design partnerships. In the 1990s Mr Samwell's partnership (3CD) worked with Newteam Limited in the area of shower accessories. Newteam became part of the Bristan group. An award winning shower pump designed by 3CD in the early 1990s is still made by Bristan today.
Mr Campbell submitted that although Mr Samwell began somewhat defensively, he was generally a fair witness. I thought Mr Samwell gave his testimony fairly. Mr Campbell also submitted that Mr Samwell's evidence was based on a wrong approach in relation to commonplace, in its reliance on old and obscure designs. I will address that below.
Mr Helme is employed as a contract design engineer at Bristan. He studied for a BA in Industrial Design at Loughborough University between 2007 and 2011. In July 2009 until August 2010 he worked at Bristan as a placement year Design Engineer. During that time he worked on the designs of the Bristan products alleged to infringe. He denied copying the Mira Azora product. His evidence was criticised by Mr Campbell. It is convenient to deal with Mr Helme's evidence in its proper context as part of the UK UDR case.
Community design right
I will refer to the Community registered designs as RCD 0001 (No. 000578463–0001) and RCD 0002 (No. 000578463–0002). Mira contends that RCD 0001 and RCD 0002 are infringed by each of the Bristan Glee, Joy and Smile products. Bristan denies infringement and in each case raises issues on the true construction and scope of the registered design. Bristan also contends that neither RCD has individual character in the light of various items of prior art. The prior art consisted of a number of designs for bathroom cabinets, a picture frame and light fittings as well as shower units.
Against RCD 0001 the prior art relied on is:
i) Bathroom cabinet item 14 in the Argos Spring/Summer 2005 catalogue;
ii) UK registered design 2060740 (Horne) – picture frame
iii) RCD 515804–0003 (Massive) – light fitting
iv) RCD 437090–0024 (Massive) – light fitting
v) RCD 165790–0018 (Trilux-Lenze) – light fitting
vi) The HiB Denia bathroom cabinet.
Against RCD 0002 the prior art relied on is items (i) to (v) above and:
vii) The Sirrus Nimbus Electratherm shower unit
viii) UK registered design 2093843 (Matsushita)
An item of prior art which was pleaded was the HiB Montana cabinet but it was dropped at trial.
The law
Council Regulation (EC) No 6 / 2002 applies to this case. I will refer to the relevant articles but there is no need to set them out. Art 3(a) defines "design". Art 4 provides that a design will be protected by Community design right if it is new and has individual character. Novelty is defined in Art 5 and individual character in Art 6. No issue of novelty arises in this case. A design has individual character if it produces a different overall impression on the informed user (Art 6 and Recital 14). This includes considering the design corpus, the nature of the product and the industrial sector to which it belongs, and the degree of design freedom (Recital 14 and Art 6(2)). Art 10 provides that the scope of protection conferred by a Community design includes any design which does not produce a different overall impression on the informed user.
On the characteristics of the informed user, the claimant referred to the summary I set out in paragraphs 33–35 of my judgment in Samsung v Apple [2012] EWHC 1882 (Pat) (sitting in the High Court) approved in the Court of Appeal at [2012] EWCA 1339. It was meant to be a distillation of the learning from three cases: PepsiCo v Grupo Promer (C-281/10P) [2012] FSR 5 at paragraphs 53 to 59; Grupo Promer v OHIM [2010] ECDR 7, (in the General Court from which PepsiCo was an appeal) and Shenzhen Taiden v OHIM, case T-153/08, 22 June 2010. I will apply the same approach here. Mr Cuddigan also referred to paragraphs 56 to 58 of my judgment in Gimex v Chillbag [2012] EWPCC 31 in which I quote paragraph 66 of Shenzhen, that the overall impression formed by the informed user involves use of the corresponding product. I believe this point is unexceptional in law but raises an issue on the facts given that there is a dispute whether the Mira Azora is indeed a product which corresponds to the design.
In general, I will take the same approach as I set out in Samsung at paragraph 53 —59.
Finally I remind myself that what really matters is what the court can see with its own eyes, the most important things are the registered design, the accused object and the prior art and the most important thing about each of these is what they look like. Although of necessity a verbalised list of features has to be gone through, it is the overall impression which counts and not that verbalised list (see Samsung v Apple in the Court of Appeal paragraphs 27–29).
The facts
The Mira Community registered designs are at Annex A and B. Annex C shows the Mira Azora and variants of that design known as Alero (white and black) and Galena, Annexes D, E and F are images of the Bristan Glee, Joy and Smile products. The prior art designs are shown or described in Annex G.
–0002
Mira's better case on Community design right relates to RCD 0002 and I will start with that. RCD 0002 was applied for on 12 th August 2006. The indication of the product is "water heaters (electric)". The product is obviously an electric shower unit.
The design is a rectangular shaped unit with relatively sharp edges and corners. There is a flat front face. The housing behind the front face has two regions, a wider part at the back and a recessed part behind the front face. The recess can be seen clearly in the side views (images 0002.3, 0002.4 and 0002.5). These side images also make clear that the front face has chamfered edges at both the front and the back. The front face extends beyond the wider perimeter of the rear unit (see image 0002.2). The unit has two circular knobs and a small power switch on the front. The knobs have small pointers. The knobs are aligned vertically. They are located in the middle horizontally and in the middle and lower half of the unit vertically. There are four round circles ("pips") near the corners of the front face (see 0002.2). There are two tiny screws on the top of the housing (see 0002.4) and at the bottom a single screw and a fitting, probably for the shower hose (see...
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