The Janger Ltd v Tesco Plc
| Jurisdiction | England & Wales |
| Judge | Mr Recorder Douglas Campbell |
| Judgment Date | 16 December 2020 |
| Neutral Citation | [2020] EWHC 3450 (IPEC) |
| Docket Number | Claim No: IP-2019-000097 |
| Court | Intellectual Property Enterprise Court |
| Date | 16 December 2020 |
[2020] EWHC 3450 (IPEC)
IN THE HIGH COURT OF JUSTICE
BUSINESS AND PROPERTY COURTS OF ENGLAND AND WALES
INTELLECTUAL PROPERTY LIST (ChD)
INTELLECTUAL PROPERTY ENTERPRISE COURT
Royal Courts of Justice, Rolls Building
Fetter Lane, London, EC4A 1NL
Mr Recorder Douglas Campbell QC
(sitting as a Judge of the Intellectual Property Enterprise Court)
Claim No: IP-2019-000097
James St Ville (instructed by Irwin Mitchell LLP) for the Claimant
Adam Gamsa (instructed by Haseltine Lake Kempner LLP) for the Defendant
Hearing dates: 3 rd – 4 th November 2020
APPROVED JUDGMENT
I direct that no official shorthand note shall be taken of this Judgment and that copies of this version as handed down may be treated as authentic.
Mr Recorder Douglas Campbell QC:
Introduction
This is a case about garment hangers.
The Claimant (“Janger”) is the proprietor of GB 2 552 562 B entitled “A hangable garment hook”, filed on 17 February 2017. Three claims are in issue, namely claims 1, 4, and 5. I do not need to consider any other claims.
The Defendant (“Tesco”) is the well-known grocer and retailer of clothes in the UK. Tesco has used, kept, offered to dispose of and disposed of certain hangers known as the Meetick hangers. These acts are said by Janger to infringe the claims identified above.
Unusually, infringement is not in issue. Instead Tesco's defence attacks validity on 2 grounds.
(a) First, it submits that claims 1 and 4 are anticipated by, alternatively obvious over, United States Design patent no. 378 167 in the name of Burnia J Jones, Jr (“Jones”) and that claim 5 is obvious over Jones. The title of Jones is “Clothes Hanger Holder”, and its single claim is for “The ornamental design for a clothes hanger holder, as shown and described”.
(b) Secondly, it submits that all claims are invalid due to the prior disclosure of a garment hanger known as the Globalhanger, which was designed by Mr Peter Greening of Global Hanger Solutions Limited (“GHSL”). Specifically Tesco submit that the Globalhanger was disclosed to Trevor Hatchett of Marks & Spencer PLC (“M&S”) at a meeting held on 1 October 2013 without any obligation of confidence. It is not disputed by Janger that the Globalhanger falls within claim 1, 4, and 5.
I had not previously heard of the term “clothes hanger holder” before this case, and neither expert said it was a commonly used one in the industry. It refers to a type of product which might be used to carry a number of clothes hangers, each of which might carry a garment. A salesman might use it to carry a number of such hangers together, or it might be used in the back of a car or lorry.
The witnesses
On behalf of the Claimant I heard oral evidence from Michael Bloomfield, Trevor Hatchett, and Mike Jones. None of the Claimant's witnesses was criticised by the Defendant. I agree: they were all good witnesses.
Mr Bloomfield is the former Managing Director of GHSL. He held that position between June 2006 and August 2015. Mr Hatchett is the Packaging and Production Quality Lead for Clothing and Home Packaging at M&S. He has worked for M&S since January 2008. Their evidence went to the alleged prior disclosure and I will discuss it below.
Mr Jones was the Claimant's expert. (He is not related to the Jones of the US design patent). He has a BSc in Product Design from the University of Central Lancashire. He started working for Mainetti, one of the world's largest designers and manufacturers of garment hangers, in 1999 and worked there for 20 years. He was engaged full time on hanger design and the manufacture of hanger design projects. From 2016 to 2019, he was Mainetti's head of design. He knew a great deal about hanger design and I found his evidence helpful.
On behalf of the Defendant I heard oral evidence from Peter Greening, Alan Wragg, and William Hunt. Mr Greening and Mr Wragg were not criticised as witnesses, although their evidence was disputed, but Mr Hunt was.
Mr Greening is a freelance designer to two companies, one of which (Meetick Hangers International Limited) supplies the Meetick hangers to Tesco. He was cross-examined about the 1 October 2013 meeting. Mr Bloomfield had given evidence that the idea for the Globalhanger design came from an early Janger hanger, but this topic was not pursued with Mr Greening and I will not consider it further.
Mr Wragg is Tesco's Category Technical Director for clothing, a position he has held since 2010 although he started working for Tesco in 1999. He was not at the 1 October 2013 meeting but gave evidence about Tesco's own approach to confidentiality in its dealings with its suppliers. He explained, and I accept, that whether Tesco's own discussions with suppliers were confidential depended on the circumstances. He was also cross-examined about Tesco's pre-action correspondence and about an error in Tesco's disclosure statement. Without intending any disrespect to Mr Wragg himself, who did his best to help the Court, I did not consider his evidence was relevant to the matters I have to decide.
Mr Hunt was Tesco's expert. He has a BA in Industrial Design Engineering from Central St Martin's. He worked at Braitrim UK Limited, another major hanger manufacturer, from 1994 to 2006 as an Industrial Designer designing garment hangers and other devices used by the clothing industry. Some of the products he designed while at Braitrim appear on a wallchart, referred to as the 2007 Spotless wallchart. He produced 2 reports, one of 13 pages and another of 11 pages.
In Mr Hunt's first report (see [25]) he said that the term “clothes hanger holder” as used in Jones was more likely than not a typographical error and should read “clothes hanger/holder”. This was despite the fact that Jones has less than half a page of text in which the term is used no less than 4 times. This evidence prompted Janger to conduct some research (see below) which confirmed that it was not a mere typographical error. Yet even then Mr Hunt clung to his original theory: see Hunt 2 at [36], first sentence. In cross-examination, Mr Hunt admitted that he had not read the text of Jones. In my view Mr Hunt was not as careful with this part of his evidence as he should have been. I think he realised this himself in the witness box.
The other major criticism of Mr Hunt was that his evidence on validity relied on hindsight knowledge of the Patent. There is something in this criticism too, although less than Janger suggested. One of the major arguments on Jones turns on whether the Jones “clothes hanger holder” is a “garment hanger” within the meaning of the Patent. It is not hindsight to consider what the Patent actually means by “garment hanger” before deciding whether Jones falls within the scope of that term. On the contrary, it is essential.
That said, some of Mr Hunt's evidence was unchallenged and I can therefore rely on it. Janger did point out that Mr Hunt had left the hanger industry in 2006, but did not give me any specific reasons as to why this disqualified him from giving expert evidence.
The skilled addressee
The relevant legal principles are set out eg in Actavis v Eli Lilly [2017] UKSC 48.
It was common ground that the skilled addressee is a designer with experience of hanger design. Such a person would have a bachelor's degree, most likely in Product Design or Industrial Design, and a few years' experience in the hanger industry.
The common general knowledge
The law is well established. See Idenix v Gilead [2016] EWCA Civ 1089 at [70]–[72] (per Kitchin LJ, with whom Floyd and Patten LJJ agreed). I apply that approach.
It was known that garment hangers had to satisfy a number of overlapping requirements, most of which are self-evident. For instance they should allow the garment to look good in stores, weigh as little as possible, minimise the cost of material, be robust enough for shipping, and permit fast hanging of the garments.
The industry was a small and specialist one. Mr Jones explained that there were only about half a dozen people based in the UK who were skilled garment hanger designers at the priority date.
A number of prior art designs were shown in the 2007 wallchart mentioned above. It was not established that any specific designs shown in this wallchart were themselves common general knowledge in 2017 but it provided a useful overview of the types of designs that formed part of the common general knowledge.
Two such types were clip hangers and letter box hangers, examples of which are shown below.
Another type of hanger was the S-hook. The S-hooks looked like butcher's hooks and were used to hang garments such as jeans. The illustrations below show a Mainetti S-hook and some other S-hooks being used to hang jeans.
For any given design there might be trade-offs. For instance a design which made garments easy to load might not prevent them falling off during shipping (see eg the jeans above) in cases where the garments and hangers were being shipped together.
It was very common for hanger designs to have narrowed openings. More specifically, it was part of the common general knowledge to have notches and “lead-ins” in hangers used for garments with straps, such as lingerie or swimwear. The lead-in is a piece of plastic which guided or funnelled a garment on to parts of the hanger where it was held into position. Mr Jones exhibited an example of a bra hanger, reproduced below, which shows notches at the top and bottom on both sides with a lead-in at the very...
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