In determining infringement of an unregistered design right (UDR), it is necessary to determine both whether the allegedly infringing article is "exactly or substantially" the same as the UDR; and whether it is so because it was copied from the UDR. The claimant (subject to what is not original or commonplace, or otherwise excluded from protection) is entitled to claim his UDR subsists in "any aspect of the shape or configuration... of the whole or part of an article".
However, once the claimant has established the scope of his right, if the defendant can show that she derived enough of her product from elsewhere, so that she did not create her design "substantially" to the claimant's UDR, she will not infringe, even if the end product is identical.
This case of Albert Packaging Limited and others v Nampak Cartons & Healthcare Limited (Patents County Court  EWPCC 15, His Honour Judge Birss QC) demonstrates that pre-existing designs can assist a defendant significantly in defending an infringement action, so a register of past designs should be maintained.
In 2005/6 the second and third claimants who were the owners of the first claimant company (the Weintroub brothers) designed a new kind of carton for food wraps, which they sold to an intermediary (Buckingham Foods). Buckingham Foods filled the supplied cartons with wraps and sold them to Sainsbury's.
In 2008, Buckingham stopped buying the cartons from the first claimant (Albert Packaging Limited). Instead, as part of a "re-tendering process" it, and another intermediary - Greencore - started buying cartons from the defendant.
The claimants brought proceedings against the defendant, claiming that it had infringed their UDR in the 2005/6 wrap carton. In alleging infringement, they argued that the UDR could be defined (in increasing terms of generality) as:
- The shape of the carton in assembled form;
- 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
- 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.
The defendant countered that one of its designers had designed two cartons in 2005 (never subsequently used on the open market) which were the basis of the cartons it designed for Buckingham and Greencore.
It also argued that:
- Definitions two and three above were both a method or principle of construction under s.213(3)(a), and therefore not protectable
- If the relevant designs are not excluded from protection under s.213(3)(a) then they are "commonplace in the design field in question" under s.213(4).
The Patents County Court judge dealt with the following issues:
- What is the design right relied upon (i.e. the scope of the design)?
- Is it a method or principle of construction?
- Is it commonplace?
- Who is entitled to sue?
- Is the design right infringed?
Issues relating to subsistence of design right: (a) - (d)
With regard to the scope of the design right, the judge noted that the definition of "design" in s.213(2) of the Copyright, Designs and Patents Act 1988 (CDPA) as "any aspect of the shape or configuration... of the whole or part of an article" meant that a claimant may (subject to validity and any exclusions) select any part of the article as protected by UDR. This, he stated, may give rise to several problems. Firstly, the defendant will usually not know exactly what right is relied upon until it receives the statement of claim. Secondly, as "similarities... are often relied on to raise the inference of copying... the ability of the claimant to select parts of his design which are small in comparison to the overall article will give rise to a distorted impression of what the defendant has done which comes close to reversing the burden of proof".
Looking at the "method or principle of construction" exclusion in s.213(3)(a), the judge was keen to stress that "design right only protects aspects of the actual physical manifestation of an idea". He noted earlier judgments which had confirmed that any conception which is so general as to allow several different appearances as being made within it, is too broad and will be invalid.
On this basis, the judge held that the claimants' approaches to defining the design right claimed in points two and three above both fell foul of s.213(a) as being "too general" and "nothing more than a definition of a concept rather than a definition of a design with a specific, individual appearance".
The defendant did not contend that approach one was excluded, and admitted that this particular design was original in the copyright sense of the word. However, it contended that the design was commonplace in the design field in question. In reaching his decision on whether the design was commonplace, the judge applied the following:
- The definition of commonplace in the earlier Ocular Sciences case that "... any design which is 'trite, trivial, common-or-garden, hackneyed or the type which would excite no peculiar attention in those in the relevant art'".
- The confirmation in the Lambretta v Teddy Smith case that the "'design field in question' was required to be assessed reasonably broadly. What matters are the sort of designs with which a notional designer of the article concerned would be familiar".
- The approach prescribed by the Court of Appeal in Scholes v Magnet  EWCA (Civ) 561, that "the court needs to [determine whether a design is commonplace] through the eyes of the person to whom the designs were ultimately intended to appeal, not through the eyes of an expert in the particular design field".
The judge held that the relevant design field was for cartons generally. On this basis, both approaches two and three were commonplace, particularly taking into account the fact that the people who would be assessing commonplaceness would be "the general public, buying whatever product is inside the box". However, approach one was not commonplace. This was so even though:
"sloping front faces and windows are commonplace features of rectangular based packs" as "[the designer's] skill involves work at a more detailed level than the definition in approach (2)...The skill involves the selection of particular sloping faces at particular angles, particular windows with particular shapes, a particular kind of flap and so on. The details are adjusted in order to produce a package which will play its part in attracting the consumer"
Finally, it should be noted that Albert Packaging Limited was not entitled to sue as an exclusive licensee, as s.225 of the CDPA provides that "an 'exclusive licence' means a licence in writing signed by or on behalf of the design right owner" (emphasis added), and the claimants had not put forward any evidence of a written licence.
Issues relating to infringement
Having determined the scope of the design the Weintroub brothers were able to seek to protect, the judge turned to the question of whether this design had been infringed. Section 226 CDPA 1988 sets out the test for infringement of design right. There will only be infringement if the design is copied so as to produce articles exactly or substantially to the design. The judge followed the approach set out below:
- Do the similarities between the product complained of and the design (as well as the possibility of access) call for an explanation? That is to say, do they raise an inference of copying? Note functional features may be similar because of the requirements of function, not copying.
- If an inference is raised, what is the defendant's explanation for this?
- Compare the product and the design objectively, to assess whether the article is produced exactly or substantially to the design.
The cartons produced, by the defendant, for Buckingham and Greencore were in the judge's view "clearly very similar, although not identical" to the claimants' designs, so that "this is a plain case which calls for an answer. Without an explanation from Nampak, the only inference to draw would be that the products were copied from the Albert Packaging design".
However, Nampak was able to show that most of the aspects of its designs for Buckingham and Greencore were derived from its 2005 carton designs. In the judge's words, when asked to design the Buckingham and Greencore cartons the defendant's designer:
"obviously looked into Nampak's computer system and found an existing Nampak design which fitted the bill. It had the essential qualities the customer wanted. There was no need to copy any other design. The dimensions needed to be adjusted and in my judgment [three particular] ...dimensions ...derived from the claimants' [design]. That is the only aspect of any of the articles which was derived from the claimants' design. Does that amount to infringement?"
in the judge's answer to the question he posed himself, in short, was "no". This was because:
"What stands out and characterises the claimants' design is the sloping top face with the window partly on the slope and extending onto the front. Although the defendant's articles look like that, the reason is because they were based on the 2005 design. All of those similarities derive from a source independent of the claimants.
Looked at as a whole, what the Nampak products owe to the claimants' design (the three dimensions) is not a substantial part of that design. The articles are not made substantially to the claimants' design and do not infringe."
In this case the defendant was able to rely on its own database of prior designs to prove that it had not copied the claimants' designs, but had engaged in independent creation of a similar carton. Without this evidence, it appears that the defendant may have been found to infringe.
Once the defendant had managed to show the independent creation of most of the features which were similar to the claimants' design, that it had copied the remaining features was irrelevant. The claimants could not claim design right in just the side view of the carton, and design rights only protects the creation of an article "exactly or substantially to [the] design".
In effect, the claimants were caught in a squeeze. The prior publically available art prevented them from relying on design right in just the profile view of their product, and the defendant's non-published prior design prevented them from proving infringement in relation to the other similar features of the defendant's carton