The Intellectual Property Enterprise Court – formerly the Patents County Court – has ruled that a UK registered design for a beer glass was valid and infringed by the defendants’ glass . It also found that the unregistered design right in the design was infringed by one of the rival’s design features.
Registered designs: a reminder
Registered designs – governed by the Registered Designs Act 1949, as amended – confer on the owner of a registered design a monopoly right to make articles incorporating that design for up to 25 years from the date of registration. A design will be capable of registration if it is new and has individual character. This means that the design must not be identical or differ only in immaterial details to a prior design, and it must produce a different overall impression on the informed user.
Unregistered design right: a reminder
Unregistered design right, which is governed by provisions of the Copyright, Designs and Patents Act 1988, subsists in an original design of any aspect of the shape or configuration of the whole or any part of an article. A design will not benefit from unregistered design right where it is “commonplace” in the design field at the time of its creation. The right confers a monopoly right to reproduce the design for commercial purposes, such as by making articles to that design.
Facts of the case
The design in question was owned by Utopia Tableware Ltd and was for a tall beer glass, sold under the name Aspen”. The allegedly infringing glass was sold by the defendants under the name “Aspire”.
The defendants admitted to having copied the exterior dimensions of the Aspen glass but maintained that neither the internal dimensions nor the wall thickness of the design had been copied. They submitted that the registered design was invalid for lacking individual character and that the Aspen design was commonplace and could not therefore benefit from unregistered design right either. They relied upon the prior art designs for Peroni, Amstel, Cobra and Carlsberg – all tall, slender, waisted glasses. Notably, in the trial, it became apparent that the Cobra glass – as well as being further away than any of the other three designs – was not made available to the public until after the application for registered design was filed, so this “prior art” was dropped.
As regards the unregistered design right, the judge considered that the relevant design field was the wider field of beer glasses, not high-waisted beer glasses . The judge considered the prior art designs put forward by the defendants and considered that while some features of the Aspen design were commonplace, one – the girth of the waist of the glass – was not and that that one element had been infringed by the defendants’ product. It is noted that, although the claimant defined its design right by reference to four particular features, the claimant was not prevented from relying on merely one feature where the rest were found to be commonplace.
On the question of the validity and infringement of the registered design, the judge considered that the informed user was a user of beer glasses and that such an individual would be interested in the design of the glass.
An important element in assessing whether a design has individual character is the degree of design freedom available to the designer. In this case, this was limited – the glass had to be tall and it had to have a waist. Consequently, minor differences in the design could be sufficient to bestow an individual character on the Aspen design. By the same token, minor differences could mean that the Aspire design was not infringing.
Assessing the Aspen design, the judge found that the Aspen design would create a strong visual impact on beer drinkers, sufficient to distinguish it from the prior art. The same could not be said of the defendants’ design which made no different overall impression from the Aspen design. The Aspen design was therefore valid and had been infringed.
Points to consider
Apart from the pleasing notion of the beer drinker as the informed user, this case is interesting for highlighting the distinction between registered design protection and unregistered design right. Specifically with regard to registered designs, it shows how limitations on design freedom can help rights holders to overcome a challenge to validity.
The Intellectual Property Bill, currently working its way through Parliament, contains important changes to the law on both registered and unregistered designs, in particular making the registered designs regime more attractive for rights owners. The Bill reflects the growing importance that designs are assuming for business. Click here to read our earlier summary of the Bill’s provisions regarding designs.
 Utopia Tableware Ltd v BBP Marketing Ltd and another  EWHC 3483 (IPEC)
 Although this was not particularly relevant in this case as the only prior art relied upon by the defendants was in terms of high-waisted beer glasses, given that the judge stated that a broad approach and interpretation would be preferred in such cases, it may be that far more prior art could (and possibly should) have been introduced and/or relied upon.