The recent case of Gimex International Groupe Import Export v Chill Bag Co Ltd, which concerns designs for “ice bucket bags” asks whether products which are similar in appearance but designed for a completely different purpose could be (i) considered as prior art; and (ii) taken into consideration when assessing novelty and individual character in design cases.

Gimex alleged that Chill Bag had infringed their registered design for an “ice bucket bag”. Chill Bag denied infringement arguing that Gimex’s registration for the “ice bucket bag” was invalid owing to the existence of a prior Gimex product (the “Transline” bottle bag) which Chill Bag said destroyed the novelty of the “ice bucket bag”.

HHJ Birss QC held that, “for the (Gimex) design to be validly registered, it must be new and have individual character over the whole of the prior art”; irrespective of use. Therefore, the Transline design could be cited as prior art when considering the “ice bucket bag” registration.

Secondly, the use to which a product is put is vital in characterising the informed user. It is the experience gained from using products of the type the design relates to that “informs” the user. If the cited prior art is not a design for a product of the kind in question, then such prior art will not form part of the “informed user’s” design awareness. Nevertheless, such prior art must still be considered for the purposes of determining novelty and individual character of the design in question.