PATENTS COUNTY COURT, JUDGMENT OF 2 JUNE 2011, ALBERT PACKAGING LTD & ORS V. NAMPAK CARTONS & HEALTHCARE LTD, [2011] EWPCC 15

England’s low cost, fast-track IP court, the Patents County Court, has analyzed the requirements for infringement of UK unregistered design rights (UK-UDR) in relation to packaging designs for tortilla-style wraps. The decision highlights the importance of carefully defining the rights relied upon and of designers recording the inspiration for any designs.

UK-UDR is a species of right distinct from (but overlapping with) Community-wide registered and unregistered design rights. It subsists in original designs (without registration) and its broad definition in section 213 of the Copyright Designs and Patents Act 1988 (CDPA 1988) allows a plaintiff to assert UK-UDR in only certain aspects of a larger article. This last feature, the judge noted, means that it is important to identify precisely which aspects of shape or configuration are relied on when bringing infringement claims before the courts.

In 2005/2006 Albert Packaging Ltd & Adrian and Jeremy Weintroub (Albert Packaging) designed a carton to be used as packaging for tortilla-style wraps. A plan of the carton before assembly and diagrams of the carton when assembled (seen from two angles), are below:

Click here to see diagram.

Albert Packaging started manufacturing this carton in 2006 and selling it to a major supermarket chain via an intermediary company. In 2008, the intermediary company chose instead to use cartons supplied by Nampak Cartons & Healthcare Ltd (Nampak). Albert Packaging claimed that the Nampak carton infringed UK-UDR in their carton.

Albert Packaging defined the design in which they claimed UK-UDR in three ways:

(1) The shape of the carton in the assembled form;

(2) A generally rectangular box save in that the top face slopes downwardly from the rear face to the front face, there being a window extending from the sloped top face onto the front face; and

(3) The distance from the shoulder of the pack to the top of the back panel, along the back panel, is 35mm regardless of the length or width or depth of the pack. This dimension is labeled "A" in the diagram above.

The judge said that only definition (1) was acceptable. He excluded approaches (2) and (3) by reference to section 213(3)(a) of CDPA 1988 because they were nothing more than definitions of a concept and would result in giving the claimants a monopoly on general design features.

Infringement

The judge found that the broad similarity of the designs and the fact that Nampak had the opportunity to copy Albert Packaging's design called for an explanation. On the facts he held that Nampak's packaging was not independently designed; Albert Packaging’s design was a source of ideas.

However, for UK-UDR to be infringed, the copying of the design must produce an article exactly or substantially similar to the design. On a close comparison of Nampak's carton and Albert Packaging's design (i.e. definition (1)), the judge found that all similarities between the packaging derived from Nampak's designs and not from Albert Packaging's carton. On this basis, the judge held that the Nampak carton did not infringe. Although there had been some copying, he said what the Nampak carton owed to Albert Packaging's design was not a substantial part of that design.