Utopia Tableware Ltd v BPP Marketing Ltd & Anr* (Recorder Douglas Campbell; [2013] EWHC 3483 (IPEC); 12.11.13)

Recorder Douglas Campbell held that Utopia's UK unregistered design right in the shape of the profile of the outer surfaces of its 'Aspen' beer glass design was valid and infringed by BPP's 'Aspire' beer glass. The Aspire was also found to infringe Utopia's UK registered design for the Aspen.

Utopia's main design drawing and the registered design are shown below:

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BPP admitted that the exterior dimensions of the Aspire were copied from Utopia's Aspen glass but claimed that neither the internal dimensions nor the thickness of the wall were copied. BPP also admitted that the Aspire did not produce on the informed user a different overall impression from the Registered Design but only insofar as the exterior shape was concerned.

Validity - Unregistered Design

Utopia relied upon the following aspects of the Unregistered Design:

  1. A first vessel Design subsists in the following aspects of shape and/or configuration of the Claimant's vessel, each of which has a range of manufacturing tolerances typical of glass products:

The shape of the profile of the outer surfaces of the Claimant's vessel, that profile in particular including, above a waisted section, an elongated tulip shaped section which tapers inwardly as it approaches the rim of the Claimant's vessel, and

The shape of the profile of the inner surfaces of the Claimant's vessel,

The shape of the rim connecting the inner and outer surfaces of the Claimant's vessel,

The thickness of the base of the Claimant's vessel.

  1. A second vessel Design subsists in the aspects of the shape and configuration of the Claimant's vessel set out in (a) above, and in the internal volume of the Claimant's vessel, each of which has a range of manufacturing tolerances typical of glass products.

The Recorder found that design right subsisted in features 1(a) to 1(d). However, he accepted that feature 1(b) was not copied by BPP and so focused on features 1(a), (c) and (d).

In considering whether the Vessel Design was commonplace and/or original, the Recorder held that the relevant design field was that of beer glasses (rather than high waisted beer glasses as argued by Utopia). Although he found that Utopia's glass was the same type of glass as the prior art designs (beer glasses by Peroni, Amstel and Carlsberg), and that features 1(c) and 1(d) were commonplace, it was obvious that feature 1(a) was noticeably different from glass to glass. Whilst the profile of the Peroni glass was most similar to Utopia's, the Peroni waist was narrower, the rim looked wider relative to the base, the shape above the waist was conical rather than (as with the Aspen) curved up the side, and unlike the Aspen it had no inward taper near the rim. The Peroni glass is shown next to the Aspen glass below:

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Validity – Registered Design

There was no challenge from BPP in relation to subsistence, ownership or novelty of the Registered Design. As BPP relied on the same alleged prior art with respect to both the Unregistered Design and the Registered Design, the Recorder assessed individual character only in relation to feature 1(a).

The Recorder held that the informed user was a person who had knowledge of the existing design corpus, was interested in the products concerned, showed a relatively high degree of attention when using them and conducted a direct comparison of the designs in issue unless there were specific circumstances which made it impractical or uncommon to do so. He held that the informed user was unlike many beer drinkers in the real world, some of which paid little attention to the design of their glass.

Finding that the Registered Design had individual character, the Recorder considered that designers of tall waisted beer glasses had only a limited degree of freedom (the glasses in question had to be tall and have a waist). Therefore, even minor differences were sufficient to confer individual character. Aspects which could be varied included the position and diameter of the waist, which were all features that the informed user would notice. Considering the overall impression created by the Peroni glass (and the other, less similar, designs) as against the Registered Design, the Registered Design was found to have individual character. The differences in the overall impressions created by the Registered Design and the Peroni glass were of a type which the informed user would notice.

Infringement

It was held that the Aspire glass was plainly made substantially to the design of feature 1(a) and therefore infringed the Unregistered Design right in the Aspen. The overall impression created by the Aspire glass was the same as the Registered Design and therefore infringed the Registered Design. The fact that the Aspire glass was made of a different material to the Aspen glass was irrelevant since the Registered Design did not specify any material.