A recent decision of Judge Birss in the Patents County Court(1) has found that a product can attract registered design protection where a new use has been found for an existing product – even where the appearances of existing products on the market and the new product are almost identical.
Gimex International, the claimant, owned a registered Community design for a product called the Ice Bag, which was an ice bucket in the form of a bag. The Ice Bag was launched in 2006 and proved very successful.
In 2010 the first defendant – Kiki's Import & Export Ltd – started selling the Chill Bag in the United Kingdom, which Gimex claimed amounted to infringement of its registered design for the Ice Bag.
The defendants denied infringement and claimed that Gimex's design was invalid in light of an earlier Gimex product called Transline, which was a bag used to carry wine bottles. Kiki also argued that Gimex had disclosed the design more than 12 months before the date on which the application for registration was filed, and that it was therefore invalid.
In a one-day trial of preliminary issues relating to the validity of the registered design and infringement, the judge held that Gimex's design was valid and had been infringed by the defendants' Chill Bag product. In reaching this decision, the judge considered whether the Chill Bag design produced a "different overall impression" from the Ice Bag.
The judge noted that the question of whether one design produced a different overall impression came into play in relation to both validity (individual character) and infringement (scope of protection). When deciding whether a design produced a different overall impression, the court should consider:
- the designer's degree of freedom in developing the design;
- the nature of the product to which the design was applied; and
- the industrial sector in which the design was used.
However, these facts also raised a further interesting consideration: what happened when a designer invented a new use (in this case, an ice bucket bag) for an existing product (the Transline bottle bag)? The judge considered that this 'new use' point raised two further questions:
- Did the Transline bag amount to prior art if it was used for a different purpose?
- Should the intended function of the product be taken into account when considering the overall impression of the design?
Regarding the first question, the judge considered that the intended purpose of the product was relevant, but only insofar as it influenced its appearance. The design therefore must be valid by comparison with any prior art, irrespective of use.
In relation to the second question, the judge held that the intended function of the product was relevant, as the informed user would be characterised by his or her use of the relevant type of product. The judge also introduced a new concept into design cases – that of the 'design awareness' of the informed user. He commented that the test for design awareness (as opposed to knowledge of the 'design corpus', which was a different concept) was "not limited to the result of simply staring at the product from a distance. The overall visual impression of a product is one which is acquired through using it". In other words (and in line with previous case law), the informed user was a user of the product and not a designer.
Validity of the Ice Bag design
In considering the different overall impression of Gimex's design, the judge held that there were function constraints when designing a bottle chiller in that it had to be able to hold and chill a bottle of wine. Aside from these aspects, the products were design-led with a reasonable degree of design freedom.
The judge considered that Gimex's Ice Bag was a relatively striking design and different from the known bottle chillers that the informed user would be familiar with from their design awareness. The overall impression created by features of the earlier Transline product was different from the Ice Bag (eg, it was a different height). Further, it could be seen as merely a bag – rather than a bottle chiller – which meant that, to the informed user, the visual differences between the products were more significant.
Despite a relatively narrow scope of protection, the judge found that the Ice Bag design was novel, had individual character and was valid.
Infringement by the Chill Bag
In considering whether the Chill Bag infringed Gimex's registered Community design, the judge noted that the informed user was a user of bottle chillers who had a relatively high degree of attention when using these products. A side-by-side comparison was therefore appropriate.
Despite the relatively narrow scope of protection afforded to the Ice Bag, the judge found that the Chill Bag did not produce a different overall impression on an informed user, as its features – in particular, its height and handles – were virtually identical. The only relevant differences were the absence of a business card window and the addition of a coaster slot in the base of the Chill Bag, neither of which led to a different overall impression.
As such, the Chill Bag infringed Gimex's registered Community design.
While the scope of protection granted to Gimex's Ice Bag was relatively narrow, introducing a novel application for an existing product allows a registered design right owner some protection against competing products that seek to profit from that innovation where such competing products differ only in small ways and give the same overall impression as the original design.
In this respect, this decision appears more favourable to registered design rights holders than the earlier decision in Samsung v Apple(2) (where the same judge held that Samsung's Galaxy tablet computers did not infringe Apple's registered Community design) and provides rights owners with some comfort that innovation can still be protected by registered design law.
The decision also stressed the importance of prior art when assessing registered design cases. Whether the newly introduced concept of design awareness becomes more widely adopted or assists rights owners going forward will depend on how it is addressed in future cases. However, it may simply add a layer of complexity to an already convoluted UK designs system.
For further information on this topic please contact Clive Thorne or Georgia Warren at RPC by telephone (+44 20 3060 6000), fax (+44 20 3060 7000) or email (email@example.com or firstname.lastname@example.org).
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