Introduction

In 2011 Kohler Mira commenced proceedings against Bristan Group in the Patents County Court for infringement of its Community Registered Designs and UK Unregistered Design Right.

Kohler Mira's design related to its Azora and Galena products. The Bristan products in issue were its Glee, Joy and Smile. HHJ Birss QC heard the trial in November 2012 and handed down Judgment on 28 January 2013.

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Community Registered Design case

Kohler Mira asserted two Community Registered Designs Nos. 000578463-0001 ("0001") and 000578463-0002 ("0002"). Validity of both designs was challenged in relation to individual character but not novelty.

Council Regulation No. 6/2002/EC sets out that a design is said to have individual character if it produces a different overall impression on the informed user. The design corpus, nature of the product, industrial sector to which it belongs and the degree of design freedom are all relevant considerations. What each of the registered design, accused object and prior art look like is the most important consideration.

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The 0002 registration had a number of dashed lines. The Judge referred to the examination Guidelines for Community designs adopted by OHIM on how such lines may be interpreted. They could indicate elements for which no protection is sought or they could indicate portions of the design which are not visible in a particular view. However, the Judge did not think that these were the only two possible interpretations. He said the proper construction of the design must be decided by considering the design registration itself. He held that the dashed lines indicated design 0002 had a transparent or translucent front face.

On the evidence, the Mira Azora design (including its glass front panel) was found to be a significant leap forward in design in relation to the prior design corpus of electric shower units which largely consisted of dull white boxes. The Judge said of the Azora that "there was nothing remotely like it on the market prior to its launch".

The overall impression produced by 0002 was a striking one with its bold, design-led appearance with sharp straight edges and flat surfaces. The Judge found the transparency of the front face notable. The plate is held in place by four pips and there were simple, vertically aligned control knobs and a power switch which enhanced the simplicity of the overall shape.

The 0002 design was held to have individual character - it produced a different overall impression on the informed user (the user of shower units) compared to many of the prior art designs which included a cabinet, picture frame and light fittings.

The Judge rejected the infringement case as against the 0002 design. Bristan's products had a relatively thin opaque plate on the front, rounded corners on both the front plate and the rear unit, no pips, a temperature display and control knobs which were flush circles with rectangular handles as opposed to smooth cylinders as in Mira's design. Most importantly, without the striking transparent front panel, the Judge did not think Bristan's designs produced the same overall impression as the 0002 design.

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In the 0001 design, the knobs and power button were marked with dashed lines. The Judge held that an informed user would understand these dashed lines to show elements for which no protection is sought. Therefore the scope of protection of the 0001 did not include consideration of the knobs on the front panel of a shower unit.

The Judge rejected that this 0001 design lacked individual character over the prior art designs. On infringement, he thought the key differences with the 0001 design and the Bristan products were the lack of pips, the thin front plate with curved corners and lack of a recess. He held the Bristan products produced a different overall impression from 0001 because the differences were too great. He rejected the infringement case over 0001.

UK Unregistered Design Right case

The findings on Kohler Mira's UK Unregistered Design Right (UDR) were more interesting. Kohler Mira relied on the following aspects of shape or configuration, both individually and in any combination, as follows:

  1. the whole of the shower unit
  2. the rectangular "tombstone" appearance of the unit when viewed from the front
  3. the two vertically aligned circular control knobs, one located at the centre of the front face and the other below it
  4. the circular power switch and associated collar which is vertically aligned with and located below the two circular control knobs  

Bristan contended that a number of the designs relied upon were commonplace in the design field in question and therefore not original.

The Judge followed Albert Packaging in relation to the legal approach to infringement of UK UDR. First, he considered whether the similarities between the Bristan product complained of and the Mira designs (as well as the possibility of access) called for an explanation. In other words - did they raise an inference of copying? In considering that matter, he would bear in mind that functional features may be similar because they were performing a function not because of copying. If an inference was raised, then he would consider what explanation Bristan put forward. In the end, he would compare the Bristan product and the design objectively, reminding himself that for infringement, the relevant article must be produced exactly or substantially to the design.

The Judge held that Kohler Mira had adequately identified that it was relying on the flat front of the shower unit in relation to Kohler Mira's case on aspect (b) but he did not accept that the fact the control knobs are the same size could fairly be said to be part of aspect (c). He held the fact that UK UDR relates to shape and configuration means that the fact that the front panel of the Mira Azora is made of glass was irrelevant. The design field was electric showers.

On validity, the Judge noted that if the only place a defendant could find a supposedly commonplace feature is in an old and obscure product then that will often tend to imply that the feature is not as commonplace as the defendant would suggest. There was no dispute that aspect (a) was not commonplace or that the combination of aspects (b), (c) plus (d) was not commonplace either.

It was found that Kohler Mira had UK UDR in the following four designs: aspect (a); aspect (b); aspects (b) plus (c); and aspects (b) plus (c) plus (d). No UK UDR was found to subsist in aspect (c) alone or in aspects (c) plus (d) (without (b)).

Copying is an essential element of UK UDR. The Judge considered whether an inference of copying could be drawn.

He held "It is clear on the evidence before me that the Mira Azora was a very significant departure in the field of electric showers when it was launched in 2006. It made a significant impact in the UK market and achieved substantial sales".

Although the Judge pointed out differences between Bristan's products and the Mira Azora, he thought the overall similarities between the Glee and Azora were striking. Bearing in mind the UK market for electric shower units, he found there was a strong inference of copying and that the similarities were not coincidental.

He identified the key similarity as the flat front face on a straight rectangular unit and also the combination of the arrangement and location of the knobs and power button with the distinct flat front face. He said to avoid a conclusion that the Glee reproduced these features would require a highly cogent and credible explanation.

Prior to these products, Bristan had not created an electric shower design. There was a design brief dated 28 November 2008 which had been approved by four Bristan staff including product manager Ms Jonas and design engineer Mr Smith.

The initial design work was undertaken by Mr Churm - a design placement student. A second design placement student - Mr Helme - then took up the reins. He produced various design concepts. After the Bristan team had picked their favourite concepts, an internal Bristan focus group was set up and presented with proposed designs. After the focus group it was decided to develop two concepts further.

Mr Helme denied being aware of the Mira Azora and Mira Galena products until after he had created his initial design concepts. The Judge was at pains not to undermine the credibility of Mr Helme. However the issue of indirect copying arose - Mr Helme was not the only relevant person in the process. Bristan produced no evidence from Mr Churm or Ms Jonas or any other staff at Bristan who were involved in the design process.

The Judge held "the staff at Bristan who were overseeing the project must have been well aware of the Mira Azora product." He thought it no coincidence that a person experienced in the shower market in 2008, aware of the Mira Azora and the impact it had made, would have encouraged a young designer in this way. He continued "Bristan were well aware of the Azora and I am sure its staff understood the significance of what they were encouraging Mr Helme to do".

The Judge rejected Bristan's arguments which assumed that there could only be two explanations - either independent design by Mr Helme or a wholesale and deliberate attempt from the outset to reproduce the Azora and set up an innocent design student as a sort of cats paw in the process. Instead, the Judge believed that Bristan staff had selected features from Mr Helme's proposals because they liked them and he expected they liked them because, whether consciously or not, they were features of the Azora.

Bristan's products were found to be made substantially to the designs relied on. There were some differences between the products, however overall, the Judge thought what made the Azora design as a whole original and not commonplace were the elements which had been reproduced in Bristan's product.

He found Bristan's Glee and Joy products infringed Kohler Mira's UK unregistered design right in aspect (a), (b), (b) plus (c), and (b) plus (c) plus (d). He found the Bristan Smile (the design without the power button) infringed aspects (a), (b), and (b) plus (c).

Commentary

Of particular interest are the findings on the use of dashed/dotted lines in design registrations. Also, a reminder about indirect and subconscious copying making no difference to a finding of infringement, and a reminder of the remedies available for UK UDR in the last five years of its life when the ability to demand a licence of right kicks in.

The finding that the dashed lines in the 0002 indicated transparency is, in our view, incorrect and contrary to established industry practice and the interpretations of such lines set out in the Guidelines adopted by OHIM. This finding on transparency was the main reason why Bristan - with its plastic fronted products - escaped infringement of the 0002 design and therefore deprived Kohler Mira of its injunction. The correct interpretation we suggest, which is one of the interpretations highlighted in the Guidelines, is that the dashed lines indicated features that were not visible in a particular view.

In the last five years of UK UDR, a licence is available as of right which if taken up means no injunction is granted against a defendant, nor can any order be made for delivery up. The amount recoverable by way of damages or an account of profits shall not exceed double the amount which would have been payable by the defendant as licensee if such a licence on those terms had been granted before the earliest infringement.

And what about dissemination of the Judgment in which Bristan have found to be copyists? The Judge refused to make an Order for dissemination in this case. Following guidance from the Court of Appeal in Samsung v Apple, it appears the bar to obtain this remedy has been raised. In a case such as this where the UK UDR was held to be infringed but not the Registered Community Designs, the Judge did not think dissemination would act as a supplemental deterrent for future infringers. He thought it would not contribute to the awareness of the public at large, and would not dispel commercial uncertainty.

Arguably, consumers might be more confused as to why such copy products are still on the shelves (ie. no injunction being granted in the last five years of UK UDR if a licence, available as of right, is taken). Kohler Mira's design is acknowledged as particularly striking which arguably makes it more of a target for potential copyists. In fact, this is the second time that Kohler Mira has had to assert its IP through the Courts in relation to its Azora design. Dissemination of the Judgment may, we believe, have acted as a supplemental deterrent to would-be infringers and served as a warning to potential copyists that producing copies (even poor copies which may escape registered design infringement) could still get them into hot water!