Thermos Ltd v Aladdin Sales & Marketing Ltd
| Jurisdiction | England & Wales |
| Judge | LORD JUSTICE ALDOUS,LORD JUSTICE MUMMERY,LORD JUSTICE KAY |
| Judgment Date | 10 May 2001 |
| Neutral Citation | [2001] EWCA Civ 667 |
| Court | Court of Appeal (Civil Division) |
| Docket Number | Case No: A3/2000/0014 |
| Date | 10 May 2001 |
[2001] EWCA Civ 667
IN THE SUPREME COURT OF JUDICATURE
COURT OF APPEAL (CIVIL DIVISION)
ON APPEAL FROM CHANCERY DIVISION
MR JUSTICE JACOB
Royal Courts of Justice
Strand, London, WC2A 2LL
Lord Justice Aldous
Lord Justice Mummery and
Lord Justice Kay
Case No: A3/2000/0014
Douglas Campbell (instructed by Taylor Joynson Garrett for the Appellants)
Guy Burkill (instructed by Garretts for the Respondent)
On 26th October 1999, Jacob J gave judgment in an action brought by Thermos Ltd against Aladdin Sales and Marketing Ltd for infringement of registered design number 2022411. The judge held that there was no infringement, but rejected the validity attack pleaded by Aladdin. Thermos appealed but Aladdin did not. It follows that the only issue before this Court was whether there had been infringement of the registered design.
The registered design was registered as of 21st April 1992 in respect of a design to be applied to "a container primarily in the form of a flask". The design consisted of five drawings namely front, rear, side, plan and underneath plan views. It was accompanied by the following statement of novelty, "The novelty of the design resides in the features of shape and configuration of the article as shown in the representations."
Infringement is governed by section 7 of the Registered Designs Act 1949 as amended. So far as it is relevant it reads:
"7.(1) The registration of a design under this Act gives the registered proprietor the exclusive right
(a) to make or import
(i) for sale or hire, or
(ii) for use for the purposes of a trade or business, or
(b) to sell, hire or offer or expose for sale or hire, an article in respect of which the design is registered and to which that design or a design not substantially different from it has been applied.
(2) The right in the registered design is infringed by a person who without the licence of the registered proprietor does anything which by virtue of subsection (1) is the exclusive right of the proprietor.
…"
The word "design" is defined in section 1 as:
"1. (1) In this Act `design' means features of shape, configuration, pattern or ornament applied to an article by any industrial process, being features which in the finished article appeal to and are judged by the eye, but does not include
(a) a method or principle of construction, or
(b) features of shape or configuration of an article which
(i) are dictated solely by the function which the article has to perform, or
(ii) are dependent upon the appearance of another article of which the article is intended by the author of the design to form an integral part.
…"
Aladdin never disputed that they had sold the alleged infringing flask called the "Insulator". Their case, which succeeded before the judge, was that the design of Insulator was so different to that shown in the registered design that there was no infringement. Thus the sole issue before the judge on infringement was whether the design applied to the Insulator was not "substantially different from the registered design".
The judge quoted this paragraph from my judgment in Gaskell & Chambers Ltd v Measure Master Ltd [1993] RPC 76 at 79 as a summary of the principles to be applied:
"The decision whether the registered design and the designs of the alleged infringements are substantially different is for the court and cannot be delegated to the opinions of the witnesses. It must be decided on a comparison of the features which appeal to, and are judged by, the eye. To do this, the court must adopt the mantle of a customer who is interested in the design of the articles in question as it is the eye of such an interested person, the interested addressee, which is relevant. To adopt that mantle it is often helpful to look at what was available before the priority date of the registered design as the eye of the interested addressee could be drawn to details if the design of the registered design only differs from the prior art by such details. However where a design differs radically from previous designs then the interested addressee's eye would be more likely to concentrate on and he would be more likely to remember the general form of the new design rather than the details."
I went on:
"It is settled law that the comparison must be made between the registered design and the alleged infringement side by side and also upon an assumption of "now and later", namely upon the assumption that the two designs are compared side by side and thereafter the interested addressee goes away and comes back later to the alleged infringements. It is in that way that the court can conclude which features of the design would in reality appeal to and be noticed by the eye and then decide whether the designs are or are not substantially different."
Both parties accepted that summary of the law to be correct. However the judge went on to make observations as to the type of prior art that the Court should consider when seeking to adopt the mantle of the interested customer. His observations do not appear to me to have formed part of the reasoning that he applied and are not relevant to this appeal. Without further argument on the point, I would not wish to express an opinion as to whether his observations were correct. I am by no means sure that they agree with the approach of this Court over the years, nor that the restriction he thought appropriate is necessary when seeking to decide the issue of infringement. Also it could introduce further controversy between parties as to what was or what was not a relevant piece of prior art to have in mind.
The judge accepted that the 1949 Act required a comparison between the design as shown in the representations and the alleged infringement. However he recorded that in the course of the case "by and large, everybody looked at the physical embodiment of the thermos design rather than designs representation." He went on to state that in reaching his conclusion he had checked again with the actual representations. That approach cannot be faulted, but in my view it is better in a case such as the present to use the drawings chosen by the proprietor to show his design as that ensures that the design features chosen by the draughtsman are concentrated.
As the judge recorded, the flask which incorporated the features of the registered design, sold under the name "Mondial", was received by the trade and public as novel and striking. Mr Pitt who had been for 20 years the national buyer in charge of household products for vacuum flasks of Macro Self-Service Wholesalers Ltd stated that there had been no new development in the glass vacuum flask market for some years prior to the introduction of the Mondial range of vacuum flasks. He remembered the Mondial as it was a quite revolutionary change in vacuum flask design. He said that the new shape of the flask and the different colours stood out. They were welcomed by the trade and he told the Court in his witness statement that he was at the time pleased that a manufacturer "was bringing out a revolutionary new design. In my opinion the appearance of a flask is a very important selling feature. Mondial looked very well designed. It was so new it could have come out of Star Wars. It looked a solid, chunky flask which could withstand a few knocks compared to the light-weight, fragile appearance of earlier flasks."
Mr Tomlinson, who had been an employee of Thermos between 1965 and 1998, had during that period risen from being a sales representative to the National Sales Manager. He said that the Mondial range was completely different from any other flask on the market at that time and was seen by customers as a very modern and innovatively designed flask. He recalled that buyers of all the major retailers that Thermos dealt with had had a very positive reaction to the Mondial vacuum flask range and in particular the two-cup design. Visually the Mondial two-cup design stood out from the crowd. This helped to increase the sales of the Mondial range as a whole. He believed that part of the reason for this additional business was the innovative modern-looking two-cup design.
Mr Campbell who appeared for Thermos criticised what the judge had said about the evidence of Mr Pitt. That...
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