Utopia Tableware Ltd v BBP Marketing Ltd and Another
| Jurisdiction | England & Wales |
| Judge | Mr Recorder Douglas Campbell |
| Judgment Date | 12 November 2013 |
| Neutral Citation | [2013] EWHC 3483 (IPEC) |
| Court | Intellectual Property Enterprise Court |
| Date | 12 November 2013 |
| Docket Number | Case No: CC 12 P04833 |
[2013] EWHC 3483 (IPEC)
IN THE HIGH COURT OF JUSTICE
CHANCERY DIVISION
INTELLECTUAL PROPERTY ENTERPRISE COURT
Rolls Building,
110 Fetter Lane,
London
EC4A 1NL
Mr Recorder Douglas Campbell
Sitting as an Enterprise Judge
Case No: CC 12 P04833
Michael Edenborough QC and Thomas St Quintin (instructed by Fasken Martineau LLP) for the Claimant
Robert Onslow (instructed by Baxter Caulfield) for the Defendants
Hearing date: 24 th September 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.
Introduction
This is a design case about beer glasses. The Claimant is represented by Michael Edenborough QC and Thomas St Quintin, instructed by Fasken Martineau LLP. There is no longer any need to distinguish between the Defendants, who are represented by Robert Onslow instructed by Baxter Caulfield.
The Claimant relies on UK unregistered design rights relating to a particular beer glass which it sells under the name Aspen, and also on UK registered design no. 4021276 which was applied for on 13 th August 2011. Copies of the Claimant's main design document for purposes of UK unregistered design right, and the Claimant's UK registered design are annexed to this judgment at Annexes 1 and 2 respectively. The unregistered design relied upon is not quite the same as the registered design.
The Defendants' product which is alleged to infringe both rights is called the Aspire. A photograph showing the Aspen and Aspire commercial products side by side is annexed to this judgment at Annex 3. As with many of the photographs in this case, the transparent nature of the glasses themselves makes it difficult to see some of the detail.
The Defendants admit that the exterior dimensions of their Aspire product were copied from the Claimant's Aspen glass. However they stress that neither the internal dimensions nor the wall thickness were copied. Both of these differences arise from the fact that the Defendants' product is made of polycarbonate rather than glass. The major issue in relation to the unregistered design right claim was subsistence, and in particular whether the designs relied upon by the Claimant were commonplace.
The Defendants also admit that the design of their Aspire product does not produce on the informed user a different overall impression from the Claimant's registered design but " only insofar as the exterior shape thereof is concerned". The major issue in relation to the registered design claim was validity, and in particular whether the design was new and/or had individual character.
Previous history of the case
The action was commenced by claim form dated 12 th December 2012. The claim form included an allegation of passing off as well as the allegations of unregistered design right infringement and registered design infringement.
On 18 th December 2012 the Claimant applied for an interim injunction. HHJ Birss QC (as he then was) heard counsel for both sides and his decision is reported at [2012] EWPCC 58. The Judge granted the injunction sought, which only lasted pending a full hearing listed for 21 st January 2013. However the Judge was concerned by an allegation which was made by Counsel for the Defendants to the effect that various emails upon which the Claimant had relied in its evidence in order to establish unquantifiable harm, and which the Claimant had alleged were unsolicited, were not unsolicited at all. The Judge therefore required the Claimant to deal with the Defendants' allegations about these emails.
The matter duly returned to Court upon 21 st January 2013. HHJ Birss QC's decision following that hearing is reported at [2013] EWPCC 15. By that time both sides had given further evidence about the Claimant's said emails. The Claimant maintained that the emails were perfectly genuine but the Defendants said that they could not be. The Judge held that he was not in a position to resolve who was right about the emails. He nevertheless granted an interim injunction pending trial.
In early April, the two individuals at the Claimant who had given evidence about these emails (namely Mr Stephen Martin Dodd, a director of the Claimant; and Mr Thomas Martin Core, the Claimant's sales director) admitted that their evidence had indeed been fabricated just as the Defendants had alleged. The Defendants sought an order pursuant to CPR Part 81.18(5) that the matter should be referred to the Attorney-General with a request that the Attorney-General consider whether to bring proceedings for contempt of court. On 1 st May 2013, HHJ Birss QC made the order sought by the Defendants. His judgment is reported at [2013] EWPCC 28. The Judge expressly accepted the Defendants' allegation that Mr Dodd and Mr Core were the lead conspirators in a conspiracy to present a false picture to the Court: see [23]-[24].
The witnesses
The Claimant's witnesses
I heard evidence from Mr Dodd, Mr Core, and Mr Mark Edwards of the Claimant. Mr Edwards is the designer of the Claimant's designs relied upon. I also heard evidence from the Claimant's expert witness, Mr Anthony Trusler.
In view of the previous history of this case, as set out above, it is not surprising that the Defendants were suspicious of the evidence given by the Claimant's witnesses as to the creation of the designs relied upon. The Defendants therefore took the unusual step of sending the Claimant's solicitors a letter shortly before trial giving advance notice of cross-examination points in order to give Mr Edwards every opportunity to recant from a witness statement which the Defendants said was " shot through with self-evident inconsistencies". The Defendants also indicated that in their view Mr Edwards might have been coerced by Mr Dodd and Mr Core into giving his evidence.
Given the gravity of the allegations being made by the Defendants, sending that letter was a sensible approach for the Defendants to take. In response Mr Edwards served a short further witness statement dealing with the alleged inconsistencies. The Defendants did not object to this.
In cross-examination Mr Dodd and Mr Core were both asked whether they had discussed the content of the Defendants' letter with Mr Edwards. Mr Dodd said that he had had a general discussion with Mr Edwards about the need to respond to it, whereas Mr Core said he had not discussed the letter with anybody. I accept their evidence. The allegation of coercion was not put to either of them, and rightly so since by then there was no basis for it.
I will deal with the subject matter of Mr Edwards' evidence below as a separate topic. In general I found Mr Edwards to be a good witness. He had no problem in explaining why the matters which the Defendants had alleged were " self-evident inconsistencies" were no such thing. The only criticism which the Defendants eventually made about his evidence was that some details about the design history only emerged in cross-examination. However the Defendants did not explain why any of these additional details made any difference and in my view they did not. These details were merely an illustration of the fact that close and careful cross examination will often bring to light additional information. I therefore reject this criticism of Mr Edwards. The Defendants did not submit that Mr Edwards was lying or seeking to deceive the Court, nor did they put to him that he had been coerced into doing so.
Mr Trusler holds City & Guilds and HNC qualifications in mechanical engineering. He joined Carlsberg Brewery in 1975 and remained there until he retired in 2012. He also obtained a Bachelor of Science degree with the Open University in December 1998. From 1994 onwards he held a series of positions within Carlsberg which led him to become increasing involved in glass bottle design. From about 2005 onwards he also became involved with beer glass manufacturers. He was a good source of information about trends in the beer glass industry, and the reasons for adopting particular design features.
Mr Trusler's evidence also included commentary about the similarities and differences between various designs in the case, and his views about the significance thereof. I did not find this part of his evidence helpful since I can see the similarities and differences for myself, and I must form my own view about their significance. Those arguments could and should have been made by way of submission and did not require expert evidence: see Jacob J (as he then was) in Oren (Isaac) v Red Box Toy Factory Ltd [1999] FSR 785, Thermos Ltd v Aladdin Sales & Marketing Ltd [2000] FSR 402.
The Defendants' witness
The Defendants adduced evidence from Mr Michael Steer, who is the General Manager of the First Defendant and also the General Manager of BB Plastics, a trading division and name used by the Second Defendant. He gave evidence about the market generally. For instance he explained that he had been in the business of designing and manufacturing plastic drinkware for over 30 years. He explained that he regularly obtained samples of glasses, both in the UK and abroad, in order to keep in touch with the market. In addition his company was regularly presented with glass samples by breweries, particularly when they wanted the Defendants to reproduce such samples in polycarbonate. Finally Mr Steer was also personally responsible for the development of the Defendants' Aspire glass and he gave evidence about that.
The Claimant invited me to reject Mr Steer's evidence about the market on the grounds that it was expert evidence, and that although...
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