COMMUNITY DESIGN COURT
7 Rolls Buildings
London EC4A 1NL
B e f o r e :
| KOHLER MIRA LIMITED
|- and -
|BRISTAN GROUP LIMITED
Hugo Cuddigan (instructed by Withers & Rogers) for the Defendant
Hearing dates: 27th, 28th November 2012
Crown Copyright ©
His Honour Judge Birss QC :
|Community design right||8|
|UK unregistered design right||66|
|Commonplace and the design field||78|
Community design right
i) Bathroom cabinet item 14 in the Argos Spring/Summer 2005 catalogue;
ii) UK registered design 2060740 (Horne) – picture frame
iii) RCD 515804-0003 (Massive) – light fitting
iv) RCD 437090-0024 (Massive) – light fitting
v) RCD 165790-0018 (Trilux-Lenze) – light fitting
vi) The HiB Denia bathroom cabinet.
vii) The Sirrus Nimbus Electratherm shower unit
viii) UK registered design 2093843 (Matsushita)
The representation of a design should be limited to the features for which protection is sought. However, the representations may comprise other elements that help identify the features of a design for which protection is sought. In an application for registration of a Community design the following identifiers will be allowed:
1. Dotted lines may be used in a view either to indicate the elements for which no protection is sought or to indicate portions of the design which are not visible in that particular view, i.e. non-visible lines. Therefore, dotted lines identify elements which are not part of the view in which they are used.
i) that the Bristan power button in Glee and Joy is larger than the one in RCD 0002, is concave rather than convex as in RCD 0002 and has no collar, unlike RCD 0002;
ii) that the edges of the front plate of the Bristan products have a rounded front and sharp back rather than the chamfered edges of the front plate in RCD 0002; and
iii) that the Bristan front plate extends less far beyond the perimeter of the rear unit than RCD 0002.
i) The front panel in the Bristan designs is opaque, unlike the transparent panel in RCD 0002.
ii) The front panel in the Bristan designs is thinner than RCD 0002 and there is no recess.
iii) The rounded corners on the Bristan products as compared to the sharp corners in RCD 0002 (both front plate and rear unit).
iv) No pips in the Bristan products
v) In Glee and Joy, the presence of a prominent temperature display, unlike RCD 0002.
vi) The different shape of the knobs: in Bristan flush circles with a rectangular handle as opposed to smooth cylinders in RCD 0002. In Smile there is no power button.
UK unregistered design right
213.— Design right.
(1) Design right is a property right which subsists in accordance with this Part in an original design.
(2) In this Part "design" means the design of any aspect of the shape or configuration (whether internal or external) of the whole or part of an article.
(3) Design right does not subsist in—
(a) a method or principle of construction,
(b) features of shape or configuration of an article which—
(i) enable the article to be connected to, or placed in, around or against, another article so that either article may perform its function, or
(ii) are dependent upon the appearance of another article of which the article is intended by the designer to form an integral part, or
(c) surface decoration.
(4) A design is not "original" for the purposes of this Part if it is commonplace in the design field in question at the time of its creation.
226.— Primary infringement of design right.
(1) The owner of design right in a design has the exclusive right to reproduce the design for commercial purposes—
(a) by making articles to that design, or
(b) by making a design document recording the design for the purpose of enabling such articles to be made.
(2) Reproduction of a design by making articles to the design means copying the design so as to produce articles exactly or substantially to that design, and references in this Part to making articles to a design shall be construed accordingly.
(3) Design right is infringed by a person who without the licence of the design right owner does, or authorises another to do, anything which by virtue of this section is the exclusive right of the design right owner.
(4) For the purposes of this section reproduction may be direct or indirect, and it is immaterial whether any intervening acts themselves infringe the design right.
39. On the basis of these authorities, the approach I will take to infringement is as follows. First I will consider whether the similarities between the [Bristan] product complained of and the [Mira] design (as well as the possibility of access) call for an explanation. In other words - do they raise an inference of copying? In considering that matter I will bear in mind that functional features may be similar because they are performing a function not because of copying. If an inference is raised then I will consider what explanation [Bristan] put forward. In the end I will compare the [Bristan] product and the design objectively, reminding myself that for infringement, the relevant article must be produced exactly or substantially to the design.
UK UDR – the facts
The aspects of shape or configuration relied on
(1) The claimant relies on the design of the following aspects of shape and configuration, both individually and in any combination thereof:
a) The whole of the said shower unit.
b) The rectangular "tombstone" appearance of the unit when viewed from the front.
c) The two vertically aligned circular control knobs, one located at the centre of the front face and the other below it.
d) The circular power switch and associated collar which is vertically aligned with and located below the two circular control knobs.
Commonplace and the design field
Exactly or substantially to the design
i) The dimensions are clearly not the same. By closing there was no suggestion that any dimensions of the Bristan products were derived from Mira.
ii) The front face of the Glee is much thinner relative to the overall size and shape of the unit than the face of the Azora. There was a suggestion that the front face of the Glee has a slight bowing. Assuming it is exists, it is barely perceptible.
iii) There is no recess in the Glee product.
iv) The Glee control knobs are made of discs flush with the face with bar handles whereas the Azora has cylinders. The Glee power button has no collar.
v) The rear unit of the Glee product, with its various functional aspects, is quite different from the rear unit of the Azora.
Against both RCDs the prior art relied on is:
(i) Bathroom cabinet item 14 in the Argos Spring/Summer 2005 catalogue
This cabinet is shown in a single view in the catalogue. It is called "Frosted layer mirror". The descriptive text reads "Rectangular mirror with frosted frame. Sits on a glass panel so it appears to 'float' from the wall." The object consists of a mirror held proud of a thin rear flat surface on a wall. The rear flat part has a perimeter which extends beyond the perimeter of the mirror. Behind the mirror must be the cabinet part and it is recessed so that the mirror appears to float. In proportion, as compared to the RCDs, this object is thinner against the wall. The mirror has four large circular pips. They are located in the frosted border on the front face. The mirrored part is inside the pips. Horizontally the frosted border accounts for just under a quarter of the width.
(ii) UK registered design 2060740 Horne
This design was registered in 2001. It is a picture frame:
(iii) RCD 515804-0003 (Massive) registered in April 2006. The indication of product is "luminaires":
(iv) RCD 437090-0024 (Massive) published in January 2006. The indication of product is "luminaires":
(v) RCD 165790-0018 (Trilux-Lenze) published in 2004. The indication of product is "built-in lighting":
Against RCD 0001 only:
(vi) The HiB Denia bathroom cabinet.
This cabinet is shown in catalogue in a single view only. It appears to be a simple blank rectangular cabinet in portrait orientation with a flat blank rectangular front door. The outer edge of the door extends beyond the outer edge of the rear cabinet. It does not appear to have a recess. Mr Ginsberg gave evidence it was launched in 2005.
(vii) The Sirrus Nimbus Electratherm shower unit
Mr Gibbs' evidence was that it was on sale for several years from 2000. It looked like this:
(viii) UK registered design 2093843 (Matsushita) registered 2000 for an electric water heater:
(ix) Mira Sport
The design of the Mira Sport varied over time and a number were in evidence. This is the 1998 version.