England and Wales Patents County Court

IN THE PATENTS COUNTY COURT

		Rolls Building 7 Rolls Buildings London EC4A 1NL
		20/07/2012

His Honour Judge Birss QC :

1. This action relates to Community Registered Design No. 616057-0001. It is owned by the claimant (Gimex). It relates to a product sold by Gimex called the Ice Bag. In effect the Ice Bag is an ice bucket in the form of a bag. The product can be described as an "ice bucket bag". Water and some ice are placed in the Ice Bag followed by a bottle of wine or champagne to be chilled. The bag will stand upright with the water, ice and bottle inside. It has handles which allow the whole thing to be carried. Since its launch in 2006 the Ice Bag has been very successful, with sales running into the millions of Euros.
2. The defendants are in two camps. The first to third defendants form one camp. The third defendant, Mr Turner, is a director of the first and second defendants. The fourth and fifth defendants (the Brands) form another camp. The Brands were at one time directors of the first defendant and are shareholders. The fourth defendant is a director of the second defendant.
3. The Brands were directors of a company called Fylde Enterprises Ltd (Fylde) which was an exclusive UK distributor of the Gimex Ice Bag. Gimex contends that Mr Turner was the sales manager for Fylde. The relationship between Fylde and Gimex did not go smoothly. There was a dispute about the use of the name Ice Bag which was compromised by an agreement in 2008. The relationship ended in 2009.
4. Mr Turner then produced an ice bucket bag called the Chill Bag. In 2010 the first defendant started selling the Chill Bag in the UK. In 2011 the second defendant also sought to do so (in fact the goods to be imported by the second defendant were detained by the UK Border Agency). These proceedings ensued.
5. Gimex contends that its Community Registered Design rights are infringed by the Chill Bag and that all the defendants are liable, one way or another, for that infringement. The third, fourth and fifth defendants are each alleged to be personally liable for the acts of the first and second defendant companies. As well as a claim for infringement of Community Registered Design there is also a claim for breach of contract against the Brands arising from an alleged breach of the 2008 agreement.
6. All of the defendants contend that the Chill Bag does not infringe and that the registration is invalid. They contend it is not new and lacks individual character. Key to the invalidity case is a prior Gimex product called Transline. Transline was a bag used simply to carry wine bottles. It was sold by Gimex before the Ice Bag. There is no doubt that the Transline bag is very similar to the Ice Bag however Gimex emphasises that the functions of these two products are very different. Gimex's case is that the Transline bag is simply a bottle bag and not a ice bucket bag. This point gives rise to the major issue in the case.
7. In the Defence and Counterclaim of the first to third defendants, in addition to the denial of infringement and counterclaim for revocation of the design registration, Mr Turner does not admit to being personally liable. There is a Part 20 claim for compensation for wrongful seizure of goods by the UK Border Agency, a claim for unjustified threats and an allegation of abuse of process pleaded to justify a claim for aggravated or exemplary damages. In the Brands' Defence and Counterclaim the claims for infringement and breach of contract are denied, personal liability is denied and there is a counterclaim for revocation of the design.
8. At the case management conference I directed that the issues of infringement and validity of the Community Registered Design would be decided first. They could be addressed at trial in a single day with limited disclosure and cross examination. All the other issues, including threats and the denials of personal liability, could be left to be addressed later if necessary. The issues relating to the design represent the real dispute between the parties. In that sense this is a trial of a preliminary issue.
9. The order at the case management conference limited disclosure and any further witness statements and cross-examination evidence to two matters. The first was the designer's degree of freedom in developing the design. This requires no explanation in a design case. The second issue was whether there is any market place distinction between the prior art relied on and the product of the registered design. I will address this point below. There was no need for independent expert evidence and none was called.
10. At the trial Hugo Cuddigan and Chris Aikens instructed by Collyer Bristow represented Gimex. Matthew Kime instructed by Ormrods represented the Brands. Mr Turner represented himself and (with leave) the first and second defendants however in the end Mr Turner simply adopted the submissions of Mr Kime. The trial took a single day to be heard. After the trial Mr Cuddigan sent me a short note relating to the law, for which I am grateful.

Application at trial

11. At the trial the Brands applied for permission to amend their pleadings to add a new allegation. The allegation was that Gimex had disclosed the Ice Bag design more than 12 months before the date of filing of the application for registration. The significance of the 12 month period is that it is the grace period provided for by Art 7(2) of Council Regulation (EC) No 6/2002. Under Art 7(2), if such disclosures take place within 12 months of the filing date, they are not taken into account for the purposes of novelty or individual character. It is clear that if the disclosure alleged by the Brands did indeed take place then the Gimex registered design would be invalid. Gimex denied that the disclosure had taken place.
12. Mr Kime contended that although it was very late, that lateness was excusable because the point emerged from the witness statement of Mr Gattino of Gimex. Mr Kime submitted that the permission should be given to allow the amendment but that the point could not be dealt with at trial. Further investigation would be needed. Disclosure would be required and probably further evidence. The issue would have to be determined later.
13. Mr Cuddigan submitted that the permission could be given but only on the basis that the issue was addressed here and now at the trial. He told me on instructions that his client had no further disclosure to give. He said this was not surprising since the alleged disclosure had not taken place. He submitted that the direction as regards cross-examination could be amended to permit Mr Kime to cross-examine Mr Gattino on the point if he wished.
14. I decided that I would give permission to amend to add the point but that the issue would be determined in this trial. My reasons would be given in this judgment.
15. My reasons are these. Mr Kime is right that the Brands cannot be criticised for raising the issue until they had seen Mr Gattino's witness statement. However that witness statement was itself served some weeks before trial. The issue was raised in correspondence but not pressed. Although time was short there was time before trial for this application (including an application for disclosure) to be put forward properly. It could have been made two weeks before trial. At that stage it would have been possible to give permission to amend, make an order for disclosure and for disclosure to be given, in advance of trial. If the application had been made promptly there would have been no reason to separate this issue from the other issues to be decided.
16. In fact before trial Mr Gattino dealt with the point in a second witness statement. He denied that the disclosure had taken place and explained why the Brands' inference that it had (from a document exhibited to Mr Gattino's statement) was incorrect.
17. To refuse permission altogether would be disproportionate since Mr Gattino has now dealt with the issue in his witness statement. To give permission but adjourn consideration of the point, with disclosure, would increase the cost significantly and would mean that the trial was not a final determination of the issues of validity and therefore of infringement. That helps no-one. The most cost-effective way forward in the circumstances is to allow the allegation in and permit Mr Gattino to be cross-examined on it. I did not make an order for disclosure. It would have been pointless.

The evidence

18. I start by reminding myself of the words of Jacob LJ in Procter & Gamble (paragraphs 3 and 4) which were repeated in Dyson at paragraph 8:

Evidence in Registered Design Cases

3. The most important things in a case about registered designs are:

1. The registered design;

2. The accused object;

3. The prior art.

And the most important thing about each of these is what they look like. Of course parties and judges have to try to put into words why they say a design has "individual character" or what the "overall impression produced on an informed user" is. But "it takes longer to say than to see" as I observed in Philips v Remington [1998] RPC 283 at 318. And words themselves are often insufficiently precise on their own.

4. It follows that a place for evidence is very limited indeed. By and large it should be possible to decide a registered design case in a few hours. The evidence of the designer, e.g. as to whether he/she was trying to make, or thought he/she had made, a breakthrough, is irrelevant. The evidence of experts, particularly about consumer products, is unlikely to be of much assistance: anyone can point out similarities and differences, though an educated eye can sometimes help a bit. Sometimes there may be a piece of technical evidence which is relevant – e.g. that design freedom is limited by certain constraints. But even so, that is usually more or less self-evident and certainly unlikely to be controversial to the point of a need for cross-examination still less substantial cross-examination.

19. The registered design is shown at Annex 1. Images of the Ice Bag product itself are at Annex 2. The accused object (the Chill Bag) is shown at Annex 3. The most important prior art (Transline) is shown at Annex 6 and Annex 7. It is fair to say that Annexes 2, 3, 6 or 7 are as good representations of the products as one could imagine in photographs but none really do justice to the objects themselves. The parties provided actual examples of the Ice Bag, Chill Bag and Transline products.

Witnesses

20. Gimex's evidence was given by Mr Samy Gattino. He is General Manager and Sales Manager of Gimex. He is also the designer of the Ice Bag. His evidence related to design freedom and to the question of market place distinction. He described how Gimex is a small family run packaging company, how he came up with the Ice Bag and its runaway success. He also gives evidence of various competitor ice bucket bag products which have been spawned by the Ice Bag's success. The significance of these products is how much they differ from the design of the Ice Bag albeit that they perform the same function. This evidence is obviously directed at the issue of design freedom. Gimex's point is that the diverse nature of the competitors' products serves to highlight just how similar the Chill Bag is to the Ice Bag. Mr Gattino was cross-examined by Mr Kime. Mr Gattino is French and a translator was sworn in with him to assist. By and large Mr Gattino gave his answers in English but sometimes with the assistance of the translator. Mr Kime submitted that on occasions Mr Gattino was evasive. In my judgment what Mr Kime detected as evasiveness was simply the result of Mr Gattino doing his best in a foreign language. I do not think he was evasive.
21. The Brands called Mr Turner as a witness. His evidence related to design freedom. Much of it was directed to show how the design of the Ice Bag was due to economic and functional considerations. Part of his initial evidence related to what the defendants thought was one of the prior Transline bags. There is no doubt that there were Transline bags in the prior art but this particular one was identical to the Ice Bag. I will call it the Ice Bag / Transline product. However Mr Gattino's second statement explained that when the Ice Bag line of products had started, they had been marked with the "Transline" brand as well. The Ice Bag /Transline product was not prior art. In the light of this evidence Mr Kime did not press the point.
22. In fact I had the benefit of five witness statements from Mr Turner but there were really only three. Mr Turner's first witness statement had been prepared with the assistance of the Brands' solicitors. Two copies were served, one on behalf of the Brands and one on behalf of the first to third defendants. The differences between them were immaterial and at trial the version served on behalf of the Brands was used. The same thing happened for Mr Turner's second statement. Two more or less identical versions were produced. At trial the version served on the Brands' behalf was used. There was a third statement also but that only appeared in one version.
23. Mr Turner was cross-examined by Mr Cuddigan. In my judgment Mr Turner gave his evidence fairly. He was not criticised by Mr Cuddigan.

The legislation

24. Council Regulation (EC) No 6/2002 applies to this case. Article 3 of the Regulation defines a design as follows:

Article 3

For the purposes of this Regulation:

(a) "design" means the appearance of the whole or a part of a product resulting from the features of, in particular, the lines, contours, colours, shape, texture and/or materials of the product itself and/or its ornamentation;

25. Mr Cuddigan drew my attention to the reference to "materials" in Art 3(a). He was right to do so but it bears emphasising that Community design law is concerned with the visual appearance of products. The materials can only be relevant insofar as they influence the appearance of a product.
26. Art. 4 of the Regulation defines the requirements for protection:

Article 4

1. A design shall be protected by a Community design to the extent that it is new and has individual character.

27. Thus a design must be "new" and must have "individual character". It is protected to the extent that it has those characteristics. Novelty in the case of registered Community designs is defined in Art 5:

Article 5

1. A design shall be considered to be new if no identical design has been made available to the public:

...

(b) in the case of a registered Community design, before the date of filing of the application for registration of the design for which protection is claimed, or, if priority is claimed, the date of priority.

2. Designs shall be deemed to be identical if their features differ only in immaterial details.

28. Individual character is defined in Art 6:

Article 6

1. A design shall be considered to have individual character if the overall impression it produces on the informed user differs from the overall impression produced on such a user by any design which has been made available to the public:

...

(b) in the case of a registered Community design, before the date of filing the application for registration or, if a priority is claimed, the date of priority.

2. In assessing individual character, the degree of freedom of the designer in developing the design shall be taken into consideration.

29. In the assessment of individual character, recital 14 is also relevant, as follows:

Recital 14

The assessment as to whether a design has individual character should be based on whether the overall impression produced on an informed user viewing the design clearly differs from that produced on him by the existing design corpus, taking into consideration the nature of the product to which the design is applied or in which it is incorporated, and in particular the industrial sector to which it belongs and the degree of freedom of the designer in developing the design.

30. Thus the key to the assessment of individual character is the "overall impression" produced by the design. It is something produced on the "informed user". These concepts are addressed below.
31. Art 8 provides:

(1) A Community design shall not subsist in features of appearance of a product which are solely dictated by its technical function

(2) A Community design shall not subsist in features of appearance of a product which must necessarily be reproduced in their exact form and dimensions in order to permit the product in which the design is incorporated or to which it is applied to be mechanically connected to or placed in, around or against another product so that either may perform its function.

32. Finally Art 10 of the Regulation deals with the scope of protection conferred by a Community design as follows:

Article 10

1. The scope of the protection conferred by a Community design shall include any design which does not produce on the informed user a different overall impression.

2. In assessing the scope of protection, the degree of freedom of the designer in developing his design shall be taken into consideration.

33. As above, this is based on the informed user and the overall impression produced by the design. The degree of freedom of the designer is taken into account.
34. Thus in summary, the Gimex registered design will be valid if the design is new and has individual character. It will have individual character if the overall impression it produces on the informed user differs from the overall impression produced on such a user by the prior art. The Chill Bag will infringe if does not produce a different overall impression on the informed user.
35. The question of whether one design produces a different overall impression comes into play both in relation to validity (individual character) and infringement (scope of protection). Matters to be taken into account in assessing whether a design produces a different overall impression include: (i) the degree of freedom of the designer in developing the design (Art 6(2), Art 10(2) and Recital 14), (ii) the nature of the product to which the design is applied (Recital 14), and (iii) the industrial sector to which it belongs (Recital 14).

The major dispute

36. The major dispute between the parties is about the overall impression the designs produce on the informed user. A key part of this debate is in effect about the correct definition of the "product" in this case and connected to it is an argument about the "design corpus". The argument is the following. Gimex contends that the product here is an ice bucket bag. The relevant design corpus comprises ice buckets, wine coolers and wine cooling sleeves. In that respect the design is said to be a significant departure. Once the Ice Bag came on the market a number of competitors brought out further designs of ice bucket bags to compete with the Ice Bag. These are quite different from the Ice Bag and Gimex relies on these to show just how much design freedom a designer has in relation to the product concerned.
37. Gimex argues that unlike the competitor products just mentioned, the Chill Bag only differs from the design by trivial tweaks and therefore the Chill Bag infringes. Gimex contends that the Transline bag is not, and can be seen not to be, an ice bucket bag at all. It is just a bag for a bottle and the informed user will react to it simply as a transparent bag for holding a bottle of wine or champagne. That is a critical part of its case on different overall impression. Gimex argues that although in some ways the differences between the Transline bag and the Ice Bag design are small, an important aspect of overall impression relates to the vital distinction between the nature of the products. Considered that way, the Ice Bag makes a different overall impression.
38. The defendants disagree. They contend that the product in question is not just an ice bucket bag, it is simply a bag or bottle bag. Looked at in this way, the differences between Transline and the Ice Bag design are very small. No different overall impression is created. If the Ice Bag design is valid at all that can only be as a result of a special business card slot on one side of the bag. The Chill Bag does not have that business card slot. Moreover the Chill Bag has a slot for a drinks coaster in the base. These differences mean that even if the Ice Bag design is valid, the Chill Bag is outside its scope of protection, it creates a different overall impression.
39. This dispute raises an issue of principle as well as an issue on the facts. I will deal with the facts below. The problem in principle arises when a designer has come up with a new use for an old thing. Although Gimex firmly deny that the following is a fair characterisation of the facts, in effect the defendants' case is that Mr Gattino's idea was no more than thinking of marketing an old bag design (Transline) for a new purpose, to act as an ice bucket bag. There was a factual dispute about whether it was really feasible to use a Transline bag in the same way as an Ice Bag because of its seams but it is undeniable that the Ice Bag product is capable of being used simply as a bag. The Ice Bag could be filled with chocolates and used to carry them around or used to present them as a gift. What then is the relevance of the use or uses to which a product may be put?
40. There are two questions. The first question is whether the fact that Transline was used for a different purpose means it is not prior art. The second question is can/should the intended function of the product be taken into account when considering the overall impression the design produces.
41. In my judgment the answer to the first question is clear. It cannot be right to exclude a prior design from consideration under Art 5 or 6 just because that design was for a product used for a different purpose from the one the subject of the registration. Mr Cuddigan accepted (I believe rightly) that if the Ice Bag registered design was in fact identical to the Transline bag then the registration would be invalid under Art 5(1) and the fact that Gimex had come up with a new use for an old thing would not save the registration. By the same token the registered design must have individual character over the Transline bag. Otherwise it is invalid.
42. Although neither party cited the case in argument, the problem arising here is closely related to the one before the Court of Appeal in Green Lane v PMS International Group [2008] EWCA 358. In that case the claimant had a Community Registered Design which showed spiky balls. Green Lane sold the spiky balls for use in tumble driers. PMS also sold spiky balls and since before the registration date had sold them as massage balls. Later (and after the registration) PMS decided to sell them for other purposes. This included selling them as laundry balls. PMS contended that the prior sales of spiky balls were relevant prior art under Arts 5 and 6. Green Lane denied that on the basis of Art 7 of the Regulation which excludes certain prior art from consideration as relevant prior art under Arts 5 and 6 if it was not known in "circles specialised in the sector concerned operating within the Community". Green Lane argued that since the registration was for laundry balls, the prior sales of massage balls were excluded by Art 7 since they were not in the same sector concerned. The issue of the correct construction of Art 7 was taken as a preliminary point before Lewison J. He held that "sector concerned" within Art 7 is the sector which consists of or includes the sector of the alleged prior art. His decision was upheld in the Court of Appeal. Green Lane argued that Recital 14 supported its argument that the "circles" in Art 7 must refer to the product for which the design is registered. Jacob LJ (with whom Ward and Rimer LJJ agreed) rejected that submission and pointed out that the right conferred by a registered design applies to any sort of product. This strongly supports my view of the answer to the first question. All prior designs for anything are capable of being relevant.
43. In paragraphs 40 and 41 Jacob LJ turned to consider the informed user, individual character and Recital 14. The argument was that the informed user cannot be expected to be informed across a whole myriad of different sectors. Jacob LJ accepted that there were real difficulties with Recital 14 but said "Whatever the informed user should be considering and whatever his notional attributes is not material to the inquiry as to what prior art is to be excluded. The informed user only comes into play once the prior art to be considered has been identified."
44. It seems to me that in the passage I have just cited, Jacob LJ is drawing attention to a fundamental difference between the notional attributes of the informed user and the question of what prior art is to be considered. I believe there is an analogy to be drawn with the role of common general knowledge in patent cases. This requires some explanation. To be valid a patent must be novel and inventive (non-obvious). It must be novel and inventive over the whole of the prior art made available to the public. Patent law defines a notional person skilled in the art. The test for obviousness is whether the invention is obvious to that skilled person over a given item of prior art. What makes a person a skilled person is their possession of the common general knowledge. The common general knowledge is the knowledge that that notional skilled person would have (per Aldous LJ in Lubrizol v Esso [1998] RPC 727 at 738). However the common general knowledge is not necessarily the same thing as the cited prior art. The cited prior art need not, and often does not, form part of the common general knowledge. However the cited prior art is still relevant. To be valid the patent must be novel and inventive over any and all the prior art, not just the common general knowledge.
45. It seems to me that design law has a similar structure. The informed user is characterised by being a user who has knowledge of something. They are "informed". I will call this knowledge the informed user's "design awareness". Although the expression "design corpus" has been used for this in other cases, that expression has also been used to refer to the prior art in the design cases and since I am trying to distinguish between those two concepts I will not use "design corpus". Acquiring their design awareness by the experience of using the products concerned is what characterises the informed user. For the design to be validly registered it must be new and have individual character over the whole of the prior art. The comparison is always between the overall impression made on the same informed user by the registered design and by the cited prior design. Whether a particular item of cited prior art is within the informed user's design awareness is not the issue. Irrespective of whether the cited prior art happens also to be part of the informed user's design awareness, to be a valid design the design must have individual character taking that cited art into account.
46. I should explain that I do not believe the test for deciding what is common general knowledge in patent law has anything to do with deciding what the informed user is informed about in design law. The concepts are very different and the policy behind them distinct. The point I am seeking to make is concerned only with the legal framework.
47. So the answer to the first question is clear. The design must be valid by comparison with any prior art, irrespective of use.
48. To answer the second question I need to consider the informed user.

Informed user

49. The identity of the informed user has been addressed by the Court of Appeal in Procter & Gamble v Reckitt Benckiser [2008] ECDR 3 and Dyson v Vax [2012] FSR 4. There has been a single judgment of the CJEU, PepsiCo v Grupo Promer, Case C-281/10, [2012] FSR 5. There have also been two relevant judgments of the General Court: Grupo Promer v OHIM [2010] ECDR 7, from which PepsiCo was an appeal, and Shenzhen Taiden v OHIM, case T-153/08, 22 June 2010.
50. The "informed user" refers to a user of the product rather than a designer (see Procter & Gamble paragraph 16) and Shenzhen paragraph 46 as follows:

"46 With regard to the interpretation of the concept of informed user, the status of 'user' implies that the person concerned uses the product in which the design is incorporated, in accordance with the purpose for which that product is intended.

51. The informed user is particularly observant and has some awareness of the state of the prior art, that is to say previous designs relating to the product in question (see Grupo Promer para 62). In paragraph 53 of the judgment in PepsiCo, the CJEU said:

"[the concept of the informed user] must be understood as lying somewhere between that of the average consumer, applicable in trade mark matters, who need not have any specific knowledge and who, as a rule, makes no direct comparison between the trade marks in conflict, and the sectoral expert, who is an expert with detailed technical expertise. Thus, the concept of the informed user may be understood as referring, not to a user of average attention, but to a particularly observant one, either because of his personal experience or his extensive knowledge of the sector in question."

The informed user's design awareness

52. In paragraph 62 of Grupo Promer the General Court said:

The informed user is particularly observant and has some awareness of the state of the prior art, that is to say the previous designs relating to the product in question that had been disclosed on the date of filing of the contested design, or, as the case may be, on the date of priority claimed.

53. This formulation does not draw a distinction between the prior art generally and previous designs for the product in question. The formulation was approved by the CJEU in PepsiCo at paragraph 54 but the point at issue was about the degree of attention or awareness of the person concerned. Neither case was focussed on the distinction which is at issue before me. I am concerned with the situation in which the prior art is said to relate to a different product from the one to which the registered design relates. I would expect that in the majority of cases both the cited prior art and the registered design relate to the same kind of product, and in those cases the distinction does not matter but in other cases it may do.
54. In the same section of the CJEU's judgment in PepsiCo the court considered further what the informed user was informed about. In paragraph 59 the CJEU held that:

Thus the qualifier "informed" suggests that, without being a designer or technical expert, the user knows the various designs which exist in the sector concerned, possessed a certain degree of knowledge with regard to the features which those designs normally include, and, as a result of his interest in the products concerned, shows a relatively high degree of attention when he uses them.

55. The same phrase appears in Shenzhen within the following passage which follows from paragraph 46 (cited above):

47 The qualifier 'informed' suggests in addition that, without being a designer or a technical expert, the user knows the various designs which exist in the sector concerned, possesses a certain degree of knowledge with regard to the features which those designs normally include, and, as a result of his interest in the products concerned, shows a relatively high degree of attention when he uses them.

48 However, contrary to what the applicant claims, that factor does not imply that the informed user is able to distinguish, beyond the experience gained by using the product concerned, the aspects of the appearance of the product which are dictated by the product's technical function from those which are arbitrary.

56. These passages in PepsiCo and Shenzhen both refer to the "product concerned". It is experience gained using products of the type the design relates to that informs the user.
57. Furthermore in Shenzhen at a later stage in the judgment when the court was considering overall impression on the facts of the case, it held in paragraph 66:

[…] That impression [the overall impression produced by the design on the informed user] must necessarily be determined also in the light of the manner in which the product at issue is used, in particular on the basis of the handling to which it is normally subject on that occasion.

58. Here the General Court is making express reference to the perception of the informed user which is acquired as a result of the manner in which the product is normally used. The impression arrived at must be a visual one, since "design" means the appearance of an article or part of it, but it is notable that the test is not limited to the result of simply staring at the product from a distance. The overall visual impression of a product is one which is acquired through using it.

How is the product identified?

59. In some cases there is no difficulty in defining the product in question. For example in Procter & Gamble in the Court of Appeal there was no argument that the product was "sprayers". In Dyson at first instance there was a dispute about the product which Arnold J resolved at paragraphs 55-57.
60. An application for a Community design must contain a statement by the applicant indicating what the relevant product is. It is called an "indication of the product" (Regulation Art 36(2)). The public register includes the "indication of the product" in the registration. However Art 36(6) of the Regulation provides that the information contained in Article 36(2) (i.e. that indication of product):

shall not affect the scope of protection of the design as such.

61. Jacob LJ addressed Art 36 in Green Lane and held that Art 36(2) did not affect legal rights at all and that this was confirmed by Art 36(6).
62. In Grupo Promer the indication of the product in the application for registration was a broad class ("promotional items for games") but the OHIM Board of Appeal had found that the design was in fact intended to be applied to a particular narrower category of product within that broad class, namely game pieces known as "pogs", "rappers" or "tazos". The General Court considered this at paragraph 54-60. The General Court held at paragraph 56, and in the light of Art 36(6), that:

"the relevant indication in the application for registration of that design should be taken into account, but also, where necessary, the design itself, in so far as it makes clear the nature of the product, its intended purpose or its function. Taking into account the design itself may enable the product to be placed within a broader category of goods indicated at the time of registration and, therefore, to determine the informed user and the degree of freedom of the designer in developing his design."

63. Mr Kime submitted that this meant that the design could only broaden the category of goods but not narrow it. That is not how I read the passage. On the facts the General Court held that the OHIM Board of Appeal had properly found that the product in question belonged to a narrower category within the broad class. When the General Court said "placed within a broader category of goods indicated at the time of registration" they meant placed (within a narrower class) inside the broader category. I also note that in Dyson, Arnold J held that the product in question before him was narrower than the indication on the registration (paragraph 55).
64. Pulling this together, I believe the law permits the "indication of the product" to be used as a convenient place to start but the issue in fact turns on consideration of the design itself. The fact that consideration of the design itself leads to a narrower definition of the product in question than is provided for by the indication on the register is neither here nor there. It can certainly do so.
65. So I conclude that the answer to the second question is clear too. The informed user is characterised by their use of the relevant type of product. Their design awareness relates to and arises from use of that type of product. On the other hand using products different in nature from the type of product for which the design is registered does not contribute to the informed user's design awareness.

The designer's degree of freedom

66. There are various factors which influence the degree of freedom of the designer. Based on paragraph 34 of the judgment of Arnold J in Dyson at first instance, [2010] EWHC 1923, it was common ground before me that design freedom can be constrained by: the technical function of the product or an element thereof; the need to incorporate features common to such products; and by economic considerations (e.g. the need for the item to be inexpensive).
67. The designer's degree of freedom is a factor taken into account in assessing overall impression on an informed user. It plainly must be linked to the product concerned. For one thing if it was not, it is hard to see how the question of constraint by technical function could be considered sensibly. Unless the degree of freedom is linked to the right type of product, there would be a risk of arriving at the wrong degree of freedom. That could lead to too wide a degree of freedom being found which in turn could lead to too broad a scope of protection.
68. In Procter & Gamble at paragraph 57 Jacob LJ said that a large departure from the prior design corpus is an indication of design freedom. The distinction between prior designs for the same kind of product and those for other products did not arise in Procter & Gamble. It seems to me that since the degree of freedom is a matter influencing the informed user's overall impression of a design, it must be concerned with designs of which the informed user is aware as part of his design awareness. A large departure for those designs is an indication to the informed user of design freedom.
69. Evidence of design freedom can also come from designs produced after the date of the registered design. If a wide variety of designs was produced afterwards that is evidence that the designer had not been constrained to design the product in the way he had (paragraph 37 of the judgment of Arnold J in Dyson at first instance).

Overall impression

70. Recital 14 expressly provides that the nature of the product to which the design is applied or in which it is incorporated should be taken into consideration in assessing overall impression and individual character. Mr Cuddigan submits "nature of the product" must include its function or purpose. As matter of law, I did not understand Mr Kime to disagree that the "nature of the product" referred to in Recital 14 must include its intended purpose or function.
71. It seems to me that in assessing overall impression the question of the intended purpose or function of the product in question is a relevant factor, after all Recital 14 says as much, but its relevance must be only insofar as it influences the appearance. How relevant the factors are will vary from case to case but I accept Mr Cuddigan's submission that the references to an informed user and to the nature of the product in Recital 14 make this clear.

Summary

72. So the answer to the question of the relevance of the use to which a product is put, is that it plays a part in the characterisation of the informed user since they are a user of the product, but it does not constrain what prior art may or may not be citable against a design registration.
73. What the informed user is informed about depends upon the correct definition of the "product" with which the case is concerned. Once the product in question has been identified, the informed user can be identified. He or she is a user of those products. What makes an informed user "informed" is their possession of a design awareness informed by their experience of that use of the prior designs of those products. Questions of design freedom are considered from the point of view of the type of products this informed user uses.
74. Once the notional informed user is defined, the question of overall impression can be resolved. From the point of view of assessing individual character (validity), the informed user must be presented with any given item of cited prior art whether or not it is a design for the product in question. Whether the cited prior art is or is not within the user's design awareness is not the issue. If the cited prior art is not a design for a product of the kind the informed user has gained experience using then it will not be part of their design awareness, but it still must be considered for the purposes of novelty and individual character. The design is only protected to the extent that it has novelty and individual character.

Assessment

75. In order to address this case I will consider the issues in this order:

i) Identify the product

ii) Identify the informed user

iii) Design freedom

iv) Overall impression of the design

v) Validity

a) Function

b) Novelty

c) Individual character

vi) Infringement

Identify the product

76. The "indication of the product" on the register reads: "Packaging, Table ornaments, Ice pails, Bags". This is broad. Mr Kime submitted that this is or should be the definition of the product in this case. He also submits that in practice Gimex marketed the Ice Bag not just as an ice bucket bag but as a table ornament, one of the broad categories in the registration. The latter submission was based on a document dated 23^rd August 2006 which was exhibited to Mr Turner's third Witness Statement. It is clear that in the document the Ice Bag product is being marketed as something specifically designed to keep bottles on ice. I read the words the defendants rely on, which mention displaying the Ice Bag on a table, in that context. I do not regard the document as being of assistance in deciding the question of "product" in relation to the registered design.
77. Mr Cuddigan says that looking at the design as registered, the product can be seen to be an ice bucket bag. The key thing is that in the images on the register one can see a bottle inside the bag and one can also see ice and water as well. He submits that it is clear that the design itself identifies the nature of product and its intended purpose or function.
78. Mr Cuddigan also relies on the evidence about market reaction to the Ice Bag product. He says that which this demonstrates is the reality of the difference between an ice bucket bag and a mere bag or bottle bag. Whereas the old Transline range of transparent bottle bags was never a great success, the Ice Bag has enjoyed great commercial success. Many people from all over the world are seeking to have a commercial relationship with Gimex in order to sell the Ice Bag. Since the Ice Bag was launched it has spawned a number of competitors also offering ice bucket bag products. They did not exist before.
79. Mr Kime cautioned me to be wary of accepting this evidence of commercial success. He pointed out that in patent cases commercial success evidence is strictly controlled. It has the capacity to get out of hand as an expensive distraction. He submitted that it would be unfortunate if registered design cases were to be burdened with similar commercial success evidence.
80. I accept Mr Kime's submission that there can be many explanations for the commercial success of a product. I cannot see how the sales figures in this case, which are substantial, can have a bearing on overall impression or individual character. I am quite sure that part of the success of the Ice Bag is down to the marketing efforts of Gimex and Mr Gattino. It is clear that the Ice Bag product has been much more successful than Transline but I am not satisfied this has anything to do with the question of whether they make a different overall impression. The launch of the competitor products is relevant to the matter of design freedom but I will address that below.
81. I am not satisfied that the evidence of market reaction after the Ice Bag was launched has a bearing on what product the registered design relates to. I will ignore it. I will approach the matter of the identity of the product by looking at the design in the register.
82. For the reasons summarised above Mr Cuddigan submits that the register indicates the product is an ice bucket bag. Mr Kime denied that and also submitted that the business card sized slot, which can be seen on one face of the product in the figures, indicates that the product is or can be used as a gift bag. I accept Mr Cuddigan's submission. The nature of the product is clear to anyone looking at the images. The fact that it has a slot in one face, which no doubt could accommodate a business card or gift card, does not undermine that. The bag clearly contains a wine bottle, ice and water. It is an ice bucket bag.
83. However rather than define the product simply as an ice bucket bag, it seems to me that the correct definition is somewhat broader. The category of products within which the design takes its place comprises ice buckets, wine coolers, wine cooling sleeves and the like. There is no single overarching term for these products. I will call the products "bottle chillers" for want of a better description.

Identify the informed user

84. The informed user is a user of bottle chillers, i.e. ice buckets, wine coolers and wine cooling sleeves. Their design awareness arises from using these products. Examples given by Gimex of such products are shown in Annex 4 below.
85. Mr Cuddigan submitted the users of such products will be adult members of the public who are in the habit of drinking chilled drinks, in particular champagne and wine; and that as a result of his or her interest, (s)he will show a relatively high degree of attention when using the products. I accept his submissions.

Design constraints and design freedom

86. There are clear design constraints. To be a bottle chiller, the bag must be able to accommodate a bottle, ice and water. The handles and the body itself must be strong enough to lift the whole thing when in use. The water and ice make the whole thing heavier than just the weight of a bottle. The product needs to be water tight. The material must be of a sufficient thickness to achieve these functions and the seams (if they exist) must be sturdy enough as well.
87. Annex 4 illustrates that bottle chillers come in all sorts of shapes and sizes. This is an indication of a high degree of design freedom.
88. The competitor ice bucket bags which became available after Gimex launched the Ice Bag are another indication of a high degree of design freedom. Images of some of these products are in Annex 5. The Bubble Bottle Ice has a very different handle arrangement from the Ice Bag (Annex 5(i)). The faces of the Bubble Bottle Freeze (Annex 5(ii)) have a very different surface appearance as compared to the Ice Bag, no doubt caused by pockets of chiller fluid. The Inflatable 2 Bottle Cooler (Annex 5(iii)) has handles formed as holes in the walls and quilted surfaces. The "Sac refrigerant" chiller (Annex 5(iv)) produced by Blokker, is trapezium shaped and again has different handles from those in the Ice Bag.
89. There were also products in evidence for which the images could not be reproduced in the judgment. There is an iBucket product at C/33 p17. The iBucket is a sharply angular ice bucket bag with no handles at all. As in the Ice Bag, in use the wine bottle top is visible above the iBucket as it would be in an ice bucket. Verrerie de la Marne produce two ice bucket bags. Both have similar bodies to the Ice Bag but the handles are different. In one the handles are formed from holes in the side panels. In the other the handle is a "lateral handle". It consists of a single loop of plastic sheet which arches over the top of the bag to one side of the bottle.
90. Mr Gattino also produced an image of various design prototypes for the Ice Bag (C/33 p7). The picture could not be reproduced in this judgment. It shows a series of products all with bodies very similar to the Ice Bag but with a variety of handles including pairs of string, plastic tube or plastic sheet and handles consisting of a single strip of plastic. This also illustrates the scope of the design freedom associated with the product.
91. Mr Kime suggested that the economics of the product imposed a significant design constraint. He suggested that the height of the Ice Bag design, which is lower than the height of the Transline bag, was chosen for economic reasons to save plastic because the plastic for the Ice Bag was thicker and therefore more costly than the plastic used in Transline. Mr Gattino explained that the Ice Bag design was not the cheapest "solution" (which I understood to mean design). There were other cheaper ones. He also did not accept in cross-examination that the height of the Ice Bag had been chosen for economic reasons. I accept this evidence although I remind myself that Mr Gattino's subjective position as designer of the Ice Bag is not the issue.
92. I reject the submission that economics places a significant constraint on the design freedom generally. In particular I reject the argument that it imposes a constraint on the bag height. These are products in which appearance is important. Nobody would buy an ugly ice bucket. The differences in various designs are not driven by cost.
93. I also find that the height of the Ice Bag is not determined by function to a significant degree. Clearly there is a minimum height below which the product will not work, but anything above that height is an aesthetic choice. The bottle would be visible inside anyway regardless of the height since the material is transparent but a relatively lower height, with the bottle protruding from the top, gives the product a particular appearance and allows the whole article to look good with a bottle inside it. While the material from which the product is made is relatively flexible as compared to an ice bucket; it cannot be too flexible. The product needs to be stiff enough to work.
94. The product has to be reusable. It is not intended to chill one bottle of wine and then collapse and that imposes a modest constraint which means the product must be made of sufficient strength to do that. There was a suggestion that the design has to be foldable. I agree the design looks as though it is made of relatively flexible material and no doubt could be folded down to some degree. This is a design constraint to some extent but the flexibility of the material is not just determined by the need to fold or flatten the product, it is also chosen by the designer for aesthetic reasons.
95. Looking at design freedom overall, the functional constraints are real enough in that the products have to be able to chill a bottle of wine. However bottle chillers are products in which aesthetics are significant. They are design led products. The constraints allow for a fair degree of design freedom and the evidence shows that this freedom has been exercised by designers. The freedom is particularly important in relation to the height and the handles.

Overall impression of the design

96. In my judgment the overall impression produced on an informed user by the registered design is as follows. The design is for an ice bucket bag made of transparent, relatively flexible material. The design has a square base, its height is low enough such that a normal wine bottle will sit proud of the top of the bag and its width is wide enough to accommodate water and ice along with the wine bottle. These elements of height and width give the product an appearance reminiscent of an ice bucket when it contains a bottle of wine. The bottle is sitting proud of the top of the bag in a similar manner to a bottle in an ice bucket. The material making up the bag is transparent and looks relatively flexible. The design also has pair of transparent tubular handles attached to a seamed region at the top through transparent washers. (The tubular nature can be seen in fig 0001.2 and the transparency in fig 0001.1). The handles are fixed in place by being tied (see figs 0001.2, 0001.3 and 0001.4).
97. To an informed user, someone who takes a relatively high degree of interest in the design, what I have described is a relatively striking design, quite different from the known bottle chillers the user is familiar with using from their design awareness. On the other hand the design clearly has constraints - it must be able to work as an ice bucket bag. Bearing this in mind the important elements of overall impression are the height and the handles. To this informed user, I do not believe the business card slot would play a significant part in the overall impression. It is clearly present but it is not significant.

Function

98. The defendants pleaded case was that the design was invalid on the ground that it did not comply with Article 8 in that it consists of features of appearance which are solely dictated by the product's technical function and/or which must necessarily be reproduced in their exact form and dimensions so as to permit the product in which the design is incorporated or to which it is applied to be mechanically connected to, or placed in, around or against another product, namely a wine bottle, so that either may perform its function.
99. The argument was that the technical functions are (i) reusability of the product, (ii) foldability of the product when empty, (iii) transparency of the product, (iv) capacity to hold a wine bottle with coolant materials and enabling their carriage with the wine bottle upright, therefore having to contain the bottle in an upright position and coolant and having at least one handle to carry it in the hand; (v) low cost.
100. I accept that items (i), (ii), (iii) and (iv) are all functional considerations which impose design constraints. I reject the argument that in this case item (v) has a significant role to play. In any event these factors have already been taken into account when considering design freedom. I am sure that they do not lead to the conclusion that the appearance of the design as a whole is dictated solely by function and I reject the argument that the design is invalid pursuant to Art 8.

Novelty

101. Lack of novelty was pleaded over all the prior art, i.e. (i) the Transline products; (ii) various other bottle bag designs offered by packaging companies, mainly in Hong Kong (the "Hong Kong bags"); and (iii) the prior disclosure of the Ice Bag itself. At the trial Mr Kime did not press the novelty argument over the Hong Kong bags. In my judgment he was right not to do so. The Ice Bag design is novel over that prior art.
102. Transline was a range of products produced by Gimex. There is no doubt that some Transline products were prior art. They are shown in Annex 6 and Annex 7. Mr Kime did not press the allegation of lack of novelty over those products. His case in relation to those was lack of individual character and I will consider it at that stage.
103. I will now deal with the allegation that the design lacked novelty over a prior disclosure of the Ice Bag itself which I admitted into the proceedings on the morning of trial. The defendants argued that a document exhibited to Mr Gattino's first witness statement showed that Ice Bag products had been on sale more than 12 months before the date of application for the registration (3^rd November 2006). It was common ground that if that was correct then the registration would be invalid as lacking novelty. However Gimex denied that this was correct. Mr Gattino had explained the history of how the Ice Bag came to be designed. It did not involve sales (or offers) before November 2005. The document in question was a Power Point presentation related to the Ice Bag which had been prepared sometime in or after 2008. It could be read as suggesting that the Ice Bag had had existing professional customers since the beginning of 2005. This would have been inconsistent with Mr Gattino's general evidence about the origin of Ice Bag and was explained specifically in his second witness statement. The Power Point slides had been produced by a trainee. The customers were Gimex's existing customers generally and did not indicate Ice Bag had been disclosed in 2005. I accept Mr Gattino's evidence. I reject the allegation that the Ice Bag was disclosed before the relevant date.
104. The allegation of lack of novelty fails.

Individual character

105. The major attack on individual character was based on the Transline products which were admitted to be prior art. Before dealing with that I will mention the other prior art, the Hong Kong bags.

The Hong Kong bags

106. The Hong Kong bags consist of a collection of various bottle bag designs. It is not possible to reproduce those in this judgment. They include clear plastic bags with clear tubular handles, bags with a pair of string handles, general bags with heights low enough so that a bottle would protrude out of the top and a silk bag for a wine bottle which is low enough that the bottle top is visible. Bearing in mind that the informed user is a user of bottle chillers, in my judgment the Gimex design produces a different overall impression on the informed user from the overall impression(s) produced by those general packing designs. They look like bags for simply carrying bottles.
107. Mr Kime's best one is a bottle bag shown empty beside another taller bottle bag which has a bottle inside. It is on the front of a leaflet for Creative Pak Industrial Company advertising a booth at the April 17-20, 2000 Hong Kong Gift and Houseware fair. It is a square based "frosted" bag with translucent sides. It is shown with a pair of red string handles. Its height is more or less the same as that of the registered design. The material from which it is made looks like paper or thin, relatively stiff plastic. Any informed user looking at that bag would see that it was not an ice bucket bag. Its visual appearance is that of a simple bag. It looks too flimsy to be an ice bucket bag. I think it, and the other bags, make a different overall impression on the informed user from that given by the Gimex design. I find that the design has individual character over the Hong Kong bags.

Transline

108. The Transline products are shown at Annex 6 and Annex 7. Annex 6 is a image from the web which depicts a group of Transline products, admitted to be prior art and Annex 7 consists of two photographs of a Transline bag taken for these proceedings. The product is a square based transparent bag. It has a pair of handles made of transparent tubing which are fixed by knots. The handles are attached to an upper seamed region with metal eyelets. The product is made of quite floppy plastic material. The seams of the product are crimped. The height is such that the top of a normal wine bottle will be inside the bag.
109. I do not doubt Mr Gattino's evidence of the design process he actually undertook and the source of his inspiration being a Veuve Cliquot product, however it can fairly be said that where his design process took him in the end was to a product (the Ice Bag) which in many ways is just a shorter, sturdier version of the Transline article.

What overall impression does the Transline produce on an informed user?

110. There was an argument about whether the Transline was in fact capable of containing ice and water and was strong enough to be carried while doing so. Mr Gattino said that the seams in Transline were relatively weak. They were strong enough to work as a bottle bag but not as a ice bucket bag. This issue is irrelevant. The strength of the seams in the Transline would not strike the informed user as significant and does not form part of its overall impression. (I did not regard the strength of the seams in the registered design as a part of its overall impression either.) However a relatively prominent aspect of the appearance of the Transline, which cannot be seen in the photographs, is that the seams are crimped.
111. It seems to me that to the informed user, the overall impression created by the Transline bag is of a tall, relatively narrow, floppy and transparent bottle bag. By relatively narrow I mean that the informed user will be able to see that a bottle will fit comfortably but with no real extra space around the bottle. The bag is tall so that a bottle will fit entirely inside. The informed user can see that it is not in fact a bottle chiller or ice bucket bag and can see that its appearance does not lend itself readily to being used as a bottle chiller. Although obviously water and a few ice cubes could be poured into a Transline bag along with a bottle, the bag is too narrow to do this sensibly or conveniently.

Does the Ice Bag have individual character over the Transline bag?

112. I bear in mind that the informed user is particularly observant. I will also approach the matter on the basis that the products are compared side by side.
113. Both designs are for transparent plastic bags with very similar plastic tubular handles. However the informed user will see that the Ice Bag design is visibly sturdier and stiffer than the Transline. The Transline has crimped seams and is taller and thinner than the Ice Bag. The handles are very similar and are attached in the same way as the Ice Bag, with knots. There is a difference in detail in that the Transline eyelets are metal whereas the eyelets in the registered design are transparent.
114. The fact that the Ice Bag design has a business card slot and the Transline does not is insignificant. It would not strike the informed user as a distinction of any significance. If that was the only difference between the Ice Bag design and the Transline then I would not accept that the Ice Bag design produces a different overall impression.
115. It seems to me that the fact that the Transline product can be seen as just a bag and not a bottle chiller, means that to the informed user, the visual differences which exist between it and the Ice Bag design are much more significant than they might be if the two designs were both for bottle bags. Crucially it seems to me that the difference in height, although small from one point of view, is significant from the point of view of the informed user. The difference in width is also significant albeit less so since the wider nature of the Ice Bag is to some extent constrained by the need to work as an ice bucket bag. The taller, thinner shape of the Transline means that unlike the Ice Bag, when a bottle is placed in the Transline, it does not look like an ice bucket. The bottle neck will not stick up from the bag and the bag is too narrow.
116. The overall impression on an informed user of bottle chillers created by Transline is different from the produced by the Ice Bag design. The scope of protection is relatively narrow but in my judgment the Ice Bag design has individual character and is valid.

Infringement

117. The Chill Bag is shown at Annex 3. It is a square based, sturdy, relatively stiff transparent bag with tubular plastic handles (and transparent eyelets). It is clearly an ice bucket bag. It is virtually identical to the registered design. The height is essentially the same and the handles are virtually identical. The only differences from the Ice Bag design which are capable of being significant are the absence of the business card slot and the presence of a coaster slot in the base.
118. In my judgment these two differences do not lead to a different overall impression. To an informed user the Chill Bag is clearly an ice bucket bag. When a bottle, ice and water are put inside it will look like an ice bucket with the bottle neck proud of the top and a wider base. I bear in mind the informed user is particularly observant. In this case I believe a side by side comparison is appropriate. The informed user would notice the lack of business card slot but would not regard it as significant given the overall impression created by the design. Equally the presence of the coaster slot in the Chill Bag is not important to the overall impression. It is barely visible. Even if the informed user noticed it at all, and given that they are observant I will assume that they do, it would not strike the user as being visually significant.
119. Even bearing in mind that the scope of protection of the Ice Bag design is relatively narrow, overall the Chill Bag does not produce a different overall impression on an informed user from that created by the Ice Bag. The Chill Bag is an infringement.

Conclusion

120. The Gimex registered design is valid and the Chill Bag product infringes it. I find for the claimant.

Annexes

121. – Community Registered Design
122. .1:

123. .2: 0001.3:

124. .4 0001.5:

125. .6 0001.7

126. – Ice Bag product

127. – Chill Bag product


Annex 4 – bottle chiller products

(i) rigid ice buckets;



(ii) wine coolers;



(iii) and cooling sleeves;


128. – Other competitor products:

(i) Bottle Bubble Ice [Bundle C/21]



(ii) Bottle Bubble freeze [Bundle C/33 p11]



(iii) Inflatable 2 bottle cooler [Bundle C/33 p19]



(iv) Sac réfrigérant chiller [Bundle C/33 p20]


129. – Transline

130. - Transline (photograph of the bag)