Sealed Air Ltd v Sharp Interpack Ltd and Another
| Jurisdiction | England & Wales |
| Judge | Mr Justice Birss |
| Judgment Date | 30 May 2013 |
| Neutral Citation | [2013] EWPCC 23 |
| Docket Number | Case No: CC11P01987 |
| Court | Patents County Court |
| Date | 30 May 2013 |
[2013] EWPCC 23
IN THE PATENTS COUNTY COURT
COMMUNITY DESIGN COURT
Rolls Building
7 Rolls Buildings
Fetter Lane
London EC4A 1NL
Mr Justice Birss
Sitting as a judge of the Patents County Court
Case No: CC11P01987
Martin Howe QC and Henry Ward (instructed by Charles Russell) for the Claimant
Anna Edwards-Stuart (instructed by Marks & Clerk Solicitors LLP) for the Defendants
Hearing dates: 10th April 2013
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 | Paragraphs |
| Introduction | 1 |
| The Registered Design case (UK and Community) | 6 |
| Registered Design law | 11 |
| The distinction between a design and representations of a design | 18 |
| Identification of the designs in this case | 22 |
| The informed user | 28 |
| Design corpus, freedom and functional considerations | 29 |
| Novelty and individual character | 50 |
| Overall impression of the Sealed Air designs | 54 |
| Infringement | 56 |
| The UK Unregistered Design case | 78 |
| UK UDR — The law | 79 |
| UK UDR — The designs relied on | 86 |
| UK UDR — Originality and commonplace | 92 |
| UK UDR — Infringement | 102 |
| Conclusion | 109 |
Introduction
This is an action for infringement of UK and Community Registered Design and for infringement of UK unregistered design right. The claimant, Sealed Air, is the owner of the rights and claims that the defendants, Sharpak, have infringed them. The rights all relate to the designs for Sealed Air's SF-500 range of plastic soft fruit punnets. The Sharpak range of products alleged to infringe are designated as PP30, PP40, PP50, PP60 and PP83. The number refers to the height of the punnet in millimetres.
Mr Howe QC and Mr Ward appear for Sealed Air instructed by Charles Russell. Ms Edwards-Stuart appears for Sharpak instructed by Marks & Clerk Solicitors LLP.
The directions given at the case management conference permitted each side to call expert evidence on certain issues but did not give permission to cross-examine the experts. There was permission to cross-examine factual evidence but in the end no factual evidence was called. The trial therefore consisted of oral submissions from counsel. No witnesses were called to give oral testimony.
Sealed Air relied on the expert evidence of Morris John Field. He was the designer of the punnets the subject of this action. He had many years experience designing packaging products including punnets for soft fruit, mushrooms and other things, Easter Egg packs, chocolate box inserts and other products. Mr Field retired from full time work at Sealed Air in 2012 and retired completely in March 2013.
Sharpak relied on the expert evidence of Brian Stanley Hill. He also had many years experience in the design of packaging. Between 1995 and 2003 he worked at Rexam. In 2003 he retired and after that the part of the business in which Mr Hill had worked was acquired by Sharpak.
The Registered Design case (UK and Community)
Sealed Air rely on six design registrations: three UK and three Community. Within these six registrations however there are only three designs: a deep punnet, a middle sized punnet and a shallow punnet. Each Community design is the same as one of the UK Registered Designs. All six registrations claim the same priority date, 31 st May 2003. The six designs in their corresponding pairs are:
The deep punnet
i) UK Registered Design No. 3,012,955;
ii) Community Registered Design No. 000104591–0003;
The middle sized punnet
iii) UK Registered Design No. 3,012,956;
iv) Community Registered Design No. 000104591–0002;
The shallow punnet
v) UK Registered Design No. 3,012,957;
vi) Community Registered Design No. 000104591–0001;
Representations of the designs are in Annex A. I have used the images from the UK Registered Designs.
Representative images of the various Sharpak punnets alleged to infringe are in Annex B.
Images of two prior punnet designs relied on in Sharpak's attack on the validity of the registered designs are in Annex C.
I will not annex the further images relied on by Sharpak in relation to the design corpus/design field.
Registered Design law
The law relating to Community Registered Designs derives from Council Regulation (EC) No 6/2002 (the Community Design Regulation). The law relating to UK Registered Designs derives from the relevant provisions of the Registered Designs Act 1949 as amended by the Registered Designs Regulations 2001 to implement Directive 98/71/EC. Although the legislative bases are distinct, the Community and UK law relating to these Registered Designs is meant to be the same. It is not necessary to draw any legal distinction between the UK Registered Designs and the Community Registered Designs in this case. I will refer only to the Community Design Regulation.
The essential framework of the Community Design Regulation was not in dispute. 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. To be new the design must not be identical to a prior design or different only in immaterial details (Art 5). 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, the industrial sector to which it belongs and the degree of design freedom (Recital 14 and Art 6(2)). Art 8 provides that the right does not subsist in features dictated solely by function. 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, Ms Edwards-Stuart 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) which was approved by the Court of Appeal ([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.
On the issue of designs dictated solely by function, both sides submitted that the correct approach to Art 8(1) was that explained by Arnold J in Dyson v Vax [2012] FSR 4, following the approach summarised by the OHIM Third Board of Appeal in Lindner Recycling (R 690/2007– 3) [2010] ECRD 1. In other words the multiplicity of forms approach was not correct and the right approach is to consider whether every feature of a design is determined by purely technical considerations. If so then the design is excluded.
On design freedom, the parties agreed that it can be constrained by the technical function of a product (see Arnold J in Dyson summarising the General Court in Grupo Promer). Ms Edwards-Stuart also submitted that design freedom could be constrained by the need to incorporate common features and economic considerations. Mr Howe did not disagree about that and so I will assume, without deciding, that this is correct.
Overall Ms Edwards-Stuart submitted that I should take the same general approach as summarised in my judgment in Samsung v Apple at paragraphs 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 distinction between a design and representations of a design
A problem in this case related to the proper interpretation of the drawings on the register. The drawings all show a star shape on the base of the punnet. Sharpak submitted that the informed user looking at the drawings would understand that they meant that the punnet should have a visible star pattern on the base. Sealed Air did not agree. It submitted that when one understood CAD drawing conventions, the star shape represents a slight dome feature on the base. Sharpak replied that the informed user, a buyer of punnets for a supermarket chain or the like, would not know about CAD drawing conventions and, seeing the drawing, would expect to see a star shape pattern on the punnet itself. Mr Howe submitted that Sharpak's argument was wrong in principle. He said a distinction had to be drawn between the design itself and representations of the design on the register. While the informed user was the notional person employed in the law in order to assess overall impression and so on, it was not right to say that the informed user was supposed to be the person who interpreted the representations of the design which appeared on the register. Mr Howe contended that the identification of what the design registered actually is, by scrutinising the representations registered, was a matter for the court and was a question of law and construction. Once the court had determined what the design registered actually was, the notional informed user was to be employed in answering the questions of validity and infringement. So he argued that it was not relevant what an informed user would make of the drawings on the register when a problem like this one arose....
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