England and Wales High Court (Patents Court) Decisions

2) The registered design:

2. Perspective View:

3. Rear Elevation:

4. Side Elevation:

5. Front Elevation:

3) The statement of novelty is as follows:

4) It therefore is in respect of the shape and form of the design as a whole. The coffee pot depicted in the registration is of the type which operates on a piston principle. It consists of two main parts. The first is a jug (normally of glass) with a carrying handle attached to it. The second consists of a combination of a lid through the centre of which passes a rod which is attached at its upper end to a knob and at its lower end to a perforated steel plate which fits snuggly into the jug. In operation the lid/rod/plate combination is removed from the jug and ground coffee and hot water are poured into the jug. The lid/rod/plate combination is placed back on the jug but with the plate located close to the underside of the lid. The coffee is allowed time to infuse into the hot water and once that has happened the user pushes down on the knob. This pushes the perforated plate down inside the jug. The perforations in the plate are of such a size that virtually all the ground coffee solids are trapped below the plate while hot water containing dissolved coffee extracts pass through the plate and collect above it. There are many piston coffee makers operating on this principle on the market, some of which are depicted in the evidence filed in this case.

5) There are at least two major suppliers of these types of product to the English market. HAL is one. The other is Bodum. Coffee makers to the registered design have been made by HAL and placed on the market under the trade name "Rialta". HAL claims that the Rialta has been a considerable commercial success. Bodum has been making and selling piston coffee makers for many years. One of its most successful products is sold under the name "Bistro". Most of its features can be discerned from the following illustration:

6) The Bodum Bistro Coffee Maker:

7) The central knob in the Bistro sits into a recess in the lid but the fit is quite close. The result is that, in the closed position, the lid and knob together look rather like a shallow hat, the recess being hardly noticeable:

8) Although none of Bodum's products are said to infringe, Bodum has brought this application to ensure that this registration, which it considers invalid, does not interfere with any future plans it may have.

9) Pursuant to s. 1(2) of the Registered Designs Act, 1949, amended in 1989, a design can only be registered if it is "new". This general provision is supplemented by s. 1(4) which, in so far as material, provides:

10) Bodum has pleaded the Bistro coffee maker as relevant prior art. It says that the Rialta design is not new in that it is the same as the Bistro or differs from it only in immaterial details or in features which are variants commonly used in the trade or that the overall differences are so slight as to be insufficient to support validity. It is not in dispute that the Bistro coffee maker is available prior art having been put on the market in the United Kingdom before the application date of the registration in suit in 1995. In response to a request for further and better particulars, Bodum has also identified certain tableware which it relies upon in support of its allegation that some or all of the features of the design in suit were commonly used in the trade.

11) At an early stage the parties agreed directions pursuant to which evidence in affidavit form was exchanged. In addition to witnesses of fact, each party had retained a design consultant as an expert witness, a Mr. Withnall for Bodum and a Mr. Grange for HAL. As is usual, counsel for the parties sent skeleton arguments to the court in advance. When the case opened and after brief discussion the parties agreed that the case should be tried on the basis of the affidavit evidence. Each relinquished its right to cross-examine. The result of taking this sensible course was that the action took just over half a day rather than the three days which had been set aside for it.

12) Bodum submits that the features of shape and configuration of the Bistro prior art which strike the eye are (i) a transparent beaker-like container, having (ii) upper and lower circumferential bands to which is affixed (iii) a generally U-shaped handle and (iv) a lid of unremarkable shape fitted with a conventional plunger mechanism. An additional feature is the "trivet" on which the coffee maker stands but Bodum says that this is a feature which hardly strikes the eye at all. The main thrust of its argument is that all these features and little else are to be found in the registered design. Since all the visually striking features are shared with the prior art, the registration must be invalid. Alternatively it is said that the differences, such as they are, are immaterial or must be excluded from consideration under s. 1(4) as common trade variants or generally are insufficient to confer novelty on the design. Bodum says that the Bistro and the registered design only differ in four areas.

13) The first is the lid. It says that although the lids on the Bistro and the Rialta are quite different, those differences make little visual impact. In the registered design the lid has a "gentler" and more rounded shape than in the Bistro. It also has a central circular recess to allow the user's fingers to grasp the knob on top of the metal piston shaft. The latter feature it says is largely functional. It also says that this is a feature which is commonly used in the trade and was at the priority date of the registered design. In support of the latter point reliance is put on the shape of the lid of a Russell Hobbs percolator which Mr. Withnall found in his cupboard at home and the lid of a casserole dish which had been passed down to him by a his grandmother. These are illustrated below:

6. The Russell Hobbs Percolator:

7. The Casserole Dish Lid:

14) The second feature is the knob on top of the shaft. Bodum say that in the registered design the knob is "a typical knob shape" and it relies again on the Russell Hobbs percolator and the casserole dish lid. It also relies on the illustration of a knob in a brochure referred to as the WDS Standard Parts brochure. This is as follows:

15) The third is the trivet which is said to have no significance in terms of eye-appeal. In other words it is "immaterial" within the meaning of s. 1(4) of the Act.

16) The fourth is the handle. It is said that a simple U-shaped handle is an extremely common feature of many items of tableware. Very many handles were exhibited and relied on as showing that this was a common trade variant.

17) HAL counters by arguing that what counts is the overall effect of the design. Although the Bistro and the registered design are clearly within the same family of products, the differences are significant. Subjecting the registered design to a feature by feature dissection is not the correct approach. It is well established that a valid design can be produced by blending together design features which are, individually, known in the art. It is denied that any of the features said to be variants commonly used in the trade are proved to be so. In support of its defence HAL also says that the Rialto coffee maker made to the registered design has been a great commercial success, displacing the cheaper Bistro from a number of retail shelves. It says that this points to the attractiveness of the design.

18) One of the difficulties in any registered design case is to explain in words why the court has come to the conclusion it has. Registered designs are concerned with what appeals to the eye. A design may be valid over prior art even though individual features are very similar. To the eye the impact of small differences may be considerable. Conversely differences may be substantial but the overall visual impact may be very similar. Language is not well suited to explaining why in each case.

19) Novelty of a registered design is to be assessed by the court as if through the eye of the customer for or trader in the relevant goods. Evidence from experts may sometimes assist the court to understand the designs but the court does not delegate the task of assessing novelty to the experts. In some respects the experts are poorly equipped for that task. Their training is likely to provide them with a much more profound appreciation of the similarities and differences between designs than customers or members of the trade would have and they are likely to be less impressed by designs containing many features which individually they have seen before.

20) Just as the expert may be too experienced to represent the view of the ordinary consumer, so too the court may become too experienced. A consequence of litigation is that the court will be taken in detail through the evidence, including the evidence of a number of experts, and will have its attention drawn over a period of hours or days to the minutiae of the similarities and differences between the design in suit and the prior art. Such a concentrated, protracted and precise analysis is far removed from the process of visual assessment undertaken by a customer or even a trader. By the end of the case the court's assessment may have been clouded by familiarity. It is for this reason that I think Mr. Hacon, who appeared for HAL, was correct to say that the court's first impression is an important factor in assessing the visual impact and distinctiveness of a design. That does not mean that the first impression is always correct. The court may have unwittingly ignored features which a reasonable customer would have taken on board. Further the court is likely to need instruction on which features, if any, are to be ignored or given less weight as a matter of law. Subject to this caveat, first impressions count.

23) This is of significance to this case. Both the Bistro and the Rialta perform in the same way. In fact they utilise a standard shape and size glass jar made by a number of glass producers and supplied for use in numerous piston coffee makers of different designs from different manufacturers. They both contain essentially the same push rod and perforated plate parts. The latter happen to be in polished metal and are clearly visible through the glass jar. The appearance of these functional common parts plays an important part in the overall visual impression made by the coffee makers. These common functional parts make the Bistro and Rialta look like cousins. That impression is reinforced by the fact that both use matt black for the colour of the lid and knob, although that has nothing to do with the design in issue which relates only to features of shape and configuration, not pattern or ornament.

24) Therefore in assessing the similarity of the Rialta to the Bistro it is necessary to pay particular regard to the features which are important for design purposes. Indeed, once it is appreciated that the glass jar, plunger and perforated plate are the common base to which the two designs have been applied, it can be appreciated that in all other respects the Bistro and Rialta are different. However, even though there are differences between the remaining features, two questions need to be answered; (i) are any of those features to be ignored under the Act and (ii) is the combined visual impact of the features which are not to be ignored sufficiently different to the prior art as to support validity.

26) The purpose of s. 1(4) is to ensure that any designer is free to take a piece of prior art and to apply to it well known and commonly used design features or visually immaterial modifications or a mixture of both without fear of falling foul of a registered design. Even if the result of his work is visually pleasing and different it cannot fall within the scope of a valid design registration. If on the other hand the design in suit contains some features which are neither immaterial nor common trade variants then it must be looked at as a whole and the question answered whether, taking all the features together, it is sufficiently different to the prior art to warrant a monopoly of up to 25 years duration. In the latter case the fact, if it be one, that many of the features are either immaterial when taken by themselves or are common trade variants is likely to make it more difficult to show novelty.

27) The words "commonly used" in s. 1(4) must be given effect. This statutory provision does not mean that all features which are known and in the palette of alternatives available to a designer can be used with impunity. Were it so, as Mr. Hacon emphasised, any design made up solely by blending together known design features would always be invalid. There is authority going back over a century showing that that has never been the law. A design can be novel even if it is made up entirely by blending together a number of old designs provided the resulting combination itself has a sufficiently distinctive appearance. It is only where all the features have been used before, and used commonly, (or are immaterial) that the Act deems them to be novelty-destroying.

28) With these consideration in mind I can turn to consider the design in issue. My first impression on comparing the registered design with the Bistro was that, although they had many features in common, in virtually all those areas where the designer had a freer hand to modify and add eye appeal to the shape and configuration of the coffee maker, they were noticeably different both in detail and overall effect. No one could call the design of the Rialta radical. Mr. Hacon did not suggest it was. But the overall effect was one which I thought was visually pleasing and distinctive. That continued to be my view even at the close of the trial. In particular I did not agree with Mr. Withnall's assessment that the Rialta was nothing more than an obvious and banal combination of known design features. I do not doubt that that was Mr. Withnall's firmly held expert opinion. Mr. Hacon did not suggest otherwise.

29) However, as mentioned above, Bodum says that most or all of the differences between the Bistro and the Rialta are ones commonly used in the trade. The onus is on it to support this assertion. In my view it has failed to do so. In the case of the lid, the only designs relied upon before me to show that the smoothly curved recess was a common trade variant were the two examples supplied by Mr. Withnall and depicted at the beginning of this judgment. Not only were they not pleaded as common trade variants, there was no evidence to show that they were. The fact that Mr. Withnall had samples at his home goes nowhere near discharging the onus on Bodum. I also reject the suggestion that the recess was solely functional. Although it facilitates holding the knob, it does not appear to be simply functional. It is designed to marry up with the smooth but rounded lines of the rest of the lid. The position as far as the knob is concerned was a bit better. The material relied on before me to show that this shape was a common trade variant were the Russell Hobbs lid, Mr. Withnall's casserole, both of which were different to the knob in the design in suit, and the WDS Catalogue. Again the first two were not pleaded but the impression given from looking at the various catalogues exhibited to the evidence is that this style of knob has been used frequently in the past. For the purpose of this judgment I will assume that Bodum has shown that this feature is a common trade variant. As far as the handle is concerned, there was no material showing that it was a common trade variant although there was evidence that similar, though different, handles had been used before. If the only difference between the Bistro and the Rialta had been the handle, I would have had little hesitation in deciding that it was insufficient to support a registration. Finally there was no evidence that the trivet used with the Rialta was a common trade variant, although I accept Bodum's argument that, taken alone, it imparts little visual distinctiveness to the design.

30) In the end, therefore, I have come to the conclusion that Bodum has failed to demonstrate that the Rialta differs from the Bistro only in immaterial details or in features which are variants commonly used in the trade. Bodum have failed to make out their attack on the basis of s. 1(4). This leaves the broader question of novelty under s. 1(2). The Act does not define the degree of novelty which is necessary to support a registration. It is difficult to see how it would be possible to do so. As Mr. Hacon pointed out, it is not necessary for a design to have novelty of a startling or ground-breaking variety to be valid. On the contrary there are many cases which show that a design can be valid even when it is quite close in appearance to the prior art, although that closeness will reduce the scope of the monopoly. To me the Rialta is visually distinct from the only pleaded prior art and it has its own and different attractiveness of shape or form. The differences over the Bistro are not of a high order but I have not been persuaded that they are so insubstantial as to render the design invalid.