Utopia Tableware v BBP Marketing
| Jurisdiction | England & Wales |
| Judge | His Honour Judge Birss |
| Judgment Date | 21 January 2013 |
| Neutral Citation | [2013] EWPCC 15 |
| Docket Number | Case No: CC12PO4853 |
| Court | Patents County Court |
| Date | 21 January 2013 |
[2013] EWPCC 15
IN THE PATENTS COUNTY COURT
Rolls Building,
Fetter Lane,
London EC4 1NL
His Honour Judge Birss
Case No: CC12PO4853
MR T ST QUINTIN (instructed by Fasken Marineau LLP) appeared on behalf of the Claimant.
MR ONSLOW (instructed by Baxter Caulfield) appeared on behalf of the Defendant.
Digital Transcript of Wordwave International, a Merrill Corporation Company 165 Fleet Street, 8th Floor, London, EC4A 2DY Tel No: 020 7421 4046 Fax No: 020 7422 6134 Web: www.merrillcorp.com/mls Email: mlstape@merrillcorp.com (Official Shorthand Writers to the Court)
Monday, 21 January 2013
THE JUDGE:
I have before me an application for an interim injunction. The claimant is represented by Mr Thomas St Quntin, instructed by Fasken Martineau, and the defendant is represented by Mr Robert Onslow, instructed by Baxter Caulfield.
The claimant sells beer glasses. They have a design for a glass called the "Aspen" and they contend that the defendant is infringing both the unregistered design right and a registered design right in that Aspen design. The registered design is UK Registered Design No. 4021276.
The principles applicable to the decision to grant or refuse an interim injunction are well established and were not debated before me. Essentially the court's task, applying American Cyanamid, is to analyse whether or not there is a properly arguable case on infringement in the first place and, if there is, to then consider unquantifiable harm to the claimant if the injunction is refused, unquantifiable or uncompensatable harm to the defendant if the injunction is granted, and then the overall balance of convenience. I will take it in those stages.
The first stage is to consider the merits of the claimant's case. The claimant submits that it has an extremely strong case in relation to unregistered design right. The evidence shows that the defendant has admitted copying the exterior shape of the Aspen design to produce their product, which is called "Aspire". I should say that the Aspen design is a glass glass, whereas the Aspire is a polycarbonate glass. The Aspen design is a waisted, relatively tall, smooth beer glass. The exterior shape of the Aspire glass is essentially almost identical to the exterior shape of the Aspen. That is the result of copying which is admitted. The originality of the Aspen glass is dealt with in the evidence of the designer, Mr Edwards. He explains how he designed it. In my judgment there is no serious issue before me that would lead one to the conclusion that the design is not original, or at least, there is a properly arguable case that the design is original, putting it the other way round. For the purpose of this application, I can proceed on the footing that the design is original in the copyright sense.
A more substantial challenge to the rights claimed by the claimant relates to the issue of commonplace. Mr Onslow relies on the decision of the Court of Appeal in Dyson v Qualtex [2006] EWCA Civ 166 and, in particular, the section dealing with commonplace at paragraphs 98–106 and, most importantly, paragraphs 105 and 106:
"105. I am not sure that these differences of opinion have any significance. For it is difficult to think of an example where it matters. It is important here to focus on exactly the context in which the question "commonplace or not" arises. That context is this: a particular aspect of the shape or configuration of an article or part of an article has been identified and has been found "original" in the copyright sense. One then asks whether that aspect is "commonplace." Clearly there will be cases where the answer is "yes" — for instance every aspect of the washers whose design drawings were held "original" in British Northrop. To that extent at least the criticism of Farmers Build in Laddie et al. para. 53.25, namely it can be read as "giving the commonplace exclusion a vanishingly small scope" must be an error. If all you have done is a design of a common object, you have merely made your own design of that which is commonplace.
106. But consider the case where the designer started with something old, very well-known but unique to a particular manufacturer. Laddie et al. postulate the Eiffel tower. Perhaps a Coca-Cola bottle would be a better example for, unlike the tower, it is ubiquitous. If a man just copies it, his work will not be "original". So there is no need for the commonplace exception there. If he copies it but makes visual variants which can properly be called "aspects of part of his design" then those variants will get UDR unless they themselves are either not original or are commonplace. But that is unlikely. The example shows that what one is focussing on is the ultimate "design": whether the designer started with some well-known prior art or not. Only if the designer makes an "original" (because not copied) design of a bottle which happens to be the same as that of the Coca-Cola bottle does the problem arise of whether that design is to be regarded as commonplace. But that is improbable."
He says that what those paragraphs emphasise is that the fact that the designer produced an original design does not mean that the design is necessarily not commonplace. The allegation that Mr Onslow makes is that the result of the work done by Mr Edwards, although original in the sense of not copied from a previous conventional tulip-shaped beer glass, has produced a design which is the same as designs already well known on the market. In particular, he relies on four: the Cobra design, the Carlsberg design, the Peroni design and the Amstel design. (It is fair to say that probably the closest, I think, is the Peroni, but I will take all four.) He says that that is what was contemplated in the judgment of Jacob LJ at paragraph 106, particularly the last part of paragraph 106.
Mr St Quintin submits that the design of his client's product is not commonplace. He relies on paragraph 5 of the judgment of Mummery LJ in the case of Farmers Build v Carier [1999] RPC 461 at 482, which is also quoted in the section that I have referred to from Qualtex:
"(5) If, however, there are aspects of the plaintiff's design of the article which are not to be found in any other design in the field in question, and those aspects are found in the defendant's design, the court would be entitled to conclude that the design in question was not "commonplace" and that there was good reason for treating it as protected from misappropriation during the limited period laid down in the 1988 Act. That would be so, even though the design in question would not begin to satisfy any requirement of novelty in the registered designs legislation."
Mr St Quntin says that in this case, although one can say that all of these glasses could be described as "tall-waisted beer glasses", given the close similarity between the defendant's copy and his client's product, the words of Mummery LJ are apt to cover this case, and the court would be entitled to conclude that the design in question was not commonplace and there were good reasons for treating it as protected from misappropriation for the limited period laid down by the 1988 Act.
It is fair to say that the design of the Aspen glass does bear overall similarities with all of the glasses I have been provided with. The designs all involve a waisted shape. Comparing Aspen to the Peroni one can see the following. The actual glass base of the Aspen design is thinner. The bottom radius is very close to being the same. The height of the Peroni glass, however, is noticeably taller than the height of the Aspen, and the shape of the top, as Mr St Quintin drew to my attention, is different. The Aspen involves a degree...
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Utopia Tableware Ltd v BBP Marketing Ltd and Another
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Utopia Tableware Ltd v Bbp Marketing Ltd and Another
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