Thermos Limited v Aladdin Sales and Marketing Limited

In registered-design infringement proceedings, substantial similarity is assessed by comparing the features of shape and configuration that appeal to and are judged by the eye of the interested addressee. The comparison should be made both side by side and after an interval, so that memorable features and the overall impression can be assessed.

The issue is one of mixed fact and law involving an evaluative judgment. An appellate court should not reverse the trial judge unless there has been a misdirection or other error of principle. The court should normally use the registered representations, while checking the physical embodiment where appropriate.

Thermos sued Aladdin for infringement of registered design number 2022411, concerning a flask design. Jacob J rejected Aladdin’s validity challenge but held that Aladdin’s Insulator flask was not substantially different from the registered design and therefore did not infringe.

Thermos appealed on infringement alone. The central issues were the correct approach to comparing the registered design and the alleged infringement, and the proper appellate function when reviewing the trial judge’s evaluative conclusion.

1. Appeal dismissed. The Court of Appeal held that the question whether the Insulator was substantially different from the registered design was analogous to the assessment of substantiality considered in Designers Guild v Russell Williams Textiles Ltd [2001] FSR 113. It was a question of mixed fact and law requiring the application of a legal standard to facts.
2. The appellate court should not reverse the trial judge’s evaluation unless the judge misdirected himself or otherwise erred in principle. The court rejected the submission that it should decide the matter afresh merely because the evidence had been given by witness statements without cross-examination.
3. The comparison required by the Registered Designs Act 1949 concerns the features of shape and configuration which appeal to and are judged by the eye of the interested addressee. The court should adopt the mantle of an interested customer. Prior art may assist in identifying the features likely to attract attention, particularly where the registered design differs from earlier designs in limited respects.
4. The comparison should be made side by side and on a “now and later” basis. The court must consider what features would in reality be noticed and remembered after the observer had seen the designs separately.
5. The registered representations were the appropriate starting point because they concentrated attention on the design features selected by the proprietor’s draughtsman. The physical Mondial flask could nevertheless be used as a check.
6. Applying those principles, the differences in the handle, proportions, bands, top, truncated cone and cup handles produced a different overall perception. The Insulator was not substantially the same design and there was no infringement.

Appeal dismissed with costs summarily assessed at £20,000. Permission to appeal to the House of Lords refused.

• Court of Appeal (Civil Division): appeal from Jacob J dismissed; costs summarily assessed at £20,000 and permission to appeal to the House of Lords refused.
• Chancery Division: Jacob J held that the registered design was valid but that Aladdin’s Insulator flask did not infringe it.