A recent decision handed down by the Patent County Court held that Bristan Group Ltd’s Glee, Joy and Smile showers infringed the UK unregistered design right (UDR) of Kohler Mira Ltd’s Azora electric shower.
A UDR is infringed when a third party copies the design so as to produce articles exactly or substantially to that design. In this case, the judge inferred copying from the striking similarities between the party’s products, which Bristan was unable to explain satisfactorily; highlighting that it makes no difference to a finding of UDR infringement whether that infringement was conscious or unconscious. In relation to substantiality, the judge considered it a borderline case but found that the copying was of a substantial part of the design because the elements reproduced in Bristan’s design were those that made Kohler Mira’s product striking and original.
Although it was held that the UDR in the shower unit was infringed, interestingly the PCC found that Kohler Mira’s two community registered design rights (CRD) were not infringed and awarded costs in favour of Bristan for this part.
How can such different conclusions be reached in relation to the same shower units? The disparity arises from what is protected by a UDR as opposed to a CRD.
UDR protection extends to 'any aspect of the shape or configuration (whether internal or external) of the whole or part of an article' as long as the design is 'original', meaning 'not common place in the design field in question at the time of its creation'. Whereas CRD protects 2D or 3D designs that are 'new' and have 'individual character'.
It was held that the striking design feature of Kohler Mira’s shower unit was the transparency of the unit’s front panel and this differentiated the products in relation to Kohler Mira’s CRD. However, this striking design feature could not be taken into account in relation to the unregistered design as it was not an aspect of shape or configuration.
Bristan has taken a licence from Kohler Mira to continue to sell its infringing shower units. This case highlights that the application of the UK's unregistered design right protection should not be underestimated.