Utopia Tableware v BBP Marketing - UK Design Rights

Two questions arose in this case:

• Did Utopia enjoy unregistered UK design right in its ‘Aspen’ glass design, or was the design commonplace?
• Did Utopia’s UK registered design for the glass have individual character?

The prior designs relied upon for both questions were those used by beer brands Peroni, Amstel and Carlsberg.

Unregistered UK design right

The IPEC first considered the unregistered design. Unregistered UK design right will only subsist in relation to a design which is ‘original’ and not copied from another in that it is not commonplace in the design field in question.

The court deemed that the most important aspect of the four features of Utopia’s glass was the outer profile which was defined as:

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.

This was noticeably different from glass to glass and therefore not commonplace according to the court. The unregistered UK design right was therefore held to subsist in the outer profile of Utopia’s glass.

Registered UK design right

Next, considering the registered design right, BBP the defendant, did not challenge the subsistence, ownership or novelty of the registered design. In fact, BBP had admitted that the exterior dimensions of their ‘Aspire’ glass were in fact copied from Utopia’s ‘Aspen’ glass but claimed that neither the internal dimensions nor the thickness of the wall were copied. Further, BBP 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.

Informed user, individual character

The Aspen glass would have individual character if it produced upon the informed user an overall impression different from that of the prior designs, taking into consideration the degree of freedom of the designer. The court said 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.

The informed user was considered to be unlike many beer drinkers in the real world, some of which apparently paid little attention to the design of their glass. BBP had argued that the informed user was a beer drinker, hoping to rely on a perceived lack of attention paid to the curvature of glasses by such drinkers; however, the court found this was not the case and was also unconvinced that drinkers did not pay close attention to the design of their glasses. It suggested that brewers invested significant time and money in developing their own unique products on the basis that beer drinkers pay more attention than BBP was giving them credit for. Having considered the overall impression produced by Utopia’s design and the prior art designs, the court held that the design had individual character over other glasses in the field.

Limited design freedom

The greater the degree of design freedom, the less likely it is that small differences between a particular design and a prior design will cause the designs to produce a different overall impression on the user, and vice versa. Although the design field was beer glasses, the judge found that the relevant design freedom was that afforded to a design of a tall, waisted beer glass. That was limited – it had to be tall and it had to have a waist. Accordingly, minor differences between it and prior designs might confer individual character, albeit with a consequently limited scope of protection when it came to infringement.

Conclusion

The court concluded that the shape of the profile of the outer surfaces of its ‘Aspen’ beer glass design was valid and infringed by BBP’s ‘Aspire’ beer glass. The informed user would, according to the court, notice the difference in the overall impression created by the registered design.

This decision illustrates how a registered design with limited design freedom and a narrow scope of protection can still be infringed. Therefore, design rights in seemingly ordinary shapes (at first glance), assuming they have individual character, are a valuable and often overlooked form of IP protection.

Useful Links

The full decision of the Intellectual Property Enterprise Court (IPEC).