Utopia Tableware Ltd v BBP Marketing Ltd & Anor

UK unregistered design right may subsist in a discernible aspect of an article’s shape or configuration, including part of a larger article. A claimed feature must be identified by reference to the pleaded design and cannot be recast as a generalised patent-style claim. A design is not original where it is commonplace in the reasonably broad design field familiar to a notional designer. For registered designs, individual character depends on the overall impression made on the informed user, having regard to the design corpus and the designer’s degree of freedom. Where design freedom is constrained by the product’s essential characteristics, relatively minor differences may suffice to create a different overall impression. Internal construction and material differences do not avoid infringement where the protected visual design remains substantially copied or produces the same overall impression.

The claimant relied on UK unregistered design rights in aspects of its Aspen beer glass and on UK registered design no. 4021276. The defendants marketed an Aspire glass whose external dimensions and visual appearance had been copied, although it was made from polycarbonate and had different internal dimensions and wall thickness.

The principal issues were whether the claimed unregistered design features were protectable and non-commonplace, whether the registered design was new and had individual character, and whether the Aspire glass infringed either right. Earlier interlocutory decisions in the same proceedings addressed interim injunctions and alleged fabricated evidence.

1. Unregistered design right. Section 213(2) of the Copyright, Designs and Patents Act 1988 permits protection for any discernible or recognisable aspect of shape or configuration, including part of a larger article. Configuration includes the relative arrangement of parts. The pleaded features were sufficiently identified, although the reference to manufacturing tolerances was unhelpful and internal volume was not an aspect of shape or configuration.
2. The relevant design field was beer glasses, adopting a reasonably broad approach. The external profile of the Aspen glass was not commonplace when compared with the Peroni, Amstel and Carlsberg designs. Its rim and base thickness were commonplace. The claimant could rely on the non-commonplace external-profile feature alone. That feature was original, owned by the claimant and had been copied.
3. Ownership lay with the claimant under section 215. There was no commission because no contract involving mutual obligations existed before production of the designs. The designer created the features in the course of employment.
4. Registered design. The registered design was valid and owned by the claimant. The informed user is a legal construct with knowledge of the design corpus, interest in the products and a relatively high degree of attention, including direct comparison where practicable. Individual character is assessed by the overall visual impression, not by a verbalised list of features.
5. The designer’s freedom was constrained by the need to create a tall, waisted beer glass. Variations in the waist, proportions, base, rim and contact points were nevertheless matters the informed user would notice. The Aspen design therefore had individual character over the prior designs and a narrow scope of protection.
6. The Aspire glass was made substantially to the protected external-profile feature. Its different interior was irrelevant to that feature. It also produced the same overall impression as the registered design. The different material did not alter the visual impression because the registration specified no particular material.
7. The claim succeeded. UK unregistered design right subsisted in the external-profile feature, was owned by the claimant and was infringed. The registered design was valid, owned by the claimant and infringed.

The judgment is a first-instance decision. The judgment refers to earlier interlocutory decisions in the same proceedings, including [2012] EWPCC 58, [2013] EWPCC 15 and [2013] EWPCC 28.