England and Wales Patents County Court

IN THE PATENTS COUNTY COURT

		Rolls Building, Fetter Lane, London EC4 1NL
		21 January 2013

THE JUDGE:

1. I have before me an application for an interim injunction. The claimant is represented by Mr Thomas St Quntin, instructed by Fasken Martineau, and the defendant is represented by Mr Robert Onslow, instructed by Baxter Caulfield.
2. The claimant sells beer glasses. They have a design for a glass called the "Aspen" and they contend that the defendant is infringing both the unregistered design right and a registered design right in that Aspen design. The registered design is UK Registered Design No. 4021276.
3. The principles applicable to the decision to grant or refuse an interim injunction are well established and were not debated before me. Essentially the court's task, applying American Cyanamid, is to analyse whether or not there is a properly arguable case on infringement in the first place and, if there is, to then consider unquantifiable harm to the claimant if the injunction is refused, unquantifiable or uncompensatable harm to the defendant if the injunction is granted, and then the overall balance of convenience. I will take it in those stages.
4. The first stage is to consider the merits of the claimant's case. The claimant submits that it has an extremely strong case in relation to unregistered design right. The evidence shows that the defendant has admitted copying the exterior shape of the Aspen design to produce their product, which is called "Aspire". I should say that the Aspen design is a glass glass, whereas the Aspire is a polycarbonate glass. The Aspen design is a waisted, relatively tall, smooth beer glass. The exterior shape of the Aspire glass is essentially almost identical to the exterior shape of the Aspen. That is the result of copying which is admitted. The originality of the Aspen glass is dealt with in the evidence of the designer, Mr Edwards. He explains how he designed it. In my judgment there is no serious issue before me that would lead one to the conclusion that the design is not original, or at least, there is a properly arguable case that the design is original, putting it the other way round. For the purpose of this application, I can proceed on the footing that the design is original in the copyright sense.
5. A more substantial challenge to the rights claimed by the claimant relates to the issue of commonplace. Mr Onslow relies on the decision of the Court of Appeal in Dyson v Qualtex [2006] EWCA Civ 166 and, in particular, the section dealing with commonplace at paragraphs 98-106 and, most importantly, paragraphs 105 and 106:

"105. I am not sure that these differences of opinion have any significance. For it is difficult to think of an example where it matters. It is important here to focus on exactly the context in which the question "commonplace or not" arises. That context is this: a particular aspect of the shape or configuration of an article or part of an article has been identified and has been found "original" in the copyright sense.

One then asks whether that aspect is "commonplace." Clearly there will be cases where the answer is "yes" – for instance every aspect of the washers whose design drawings were held "original" in British Northrop. To that extent at least the criticism of Farmers Build in Laddie et al. para. 53.25, namely it can be read as "giving the commonplace exclusion a vanishingly small scope" must be an error. If all you have done is a design of a common object, you have merely made your own design of that which is commonplace.

106. But consider the case where the designer started with something old, very well-known but unique to a particular manufacturer. Laddie et al. postulate the Eiffel tower. Perhaps a Coca-Cola bottle would be a better example for, unlike the tower, it is ubiquitous. If a man just copies it, his work will not be "original". So there is no need for the commonplace exception there. If he copies it but makes visual variants which can properly be called "aspects of part of his design" then those variants will get UDR unless they themselves are either not original or are commonplace. But that is unlikely. The example shows that what one is focussing on is the ultimate "design": whether the designer started with some well-known prior art or not. Only if the designer makes an "original" (because not copied) design of a bottle which happens to be the same as that of the Coca-Cola bottle does the problem arise of whether that design is to be regarded as commonplace. But that is improbable."

He says that what those paragraphs emphasise is that the fact that the designer produced an original design does not mean that the design is necessarily not commonplace. The allegation that Mr Onslow makes is that the result of the work done by Mr Edwards, although original in the sense of not copied from a previous conventional tulip-shaped beer glass, has produced a design which is the same as designs already well known on the market. In particular, he relies on four: the Cobra design, the Carlsberg design, the Peroni design and the Amstel design. (It is fair to say that probably the closest, I think, is the Peroni, but I will take all four.) He says that that is what was contemplated in the judgment of Jacob LJ at paragraph 106, particularly the last part of paragraph 106.

6. Mr St Quintin submits that the design of his client's product is not commonplace. He relies on paragraph 5 of the judgment of Mummery LJ in the case of Farmers Build v Carier [1999] RPC 461 at 482, which is also quoted in the section that I have referred to from Qualtex:

"(5) If, however, there are aspects of the plaintiff's design of the article which are not to be found in any other design in the field in question, and those aspects are found in the defendant's design, the court would be entitled to conclude that the design in question was not "commonplace" and that there was good reason for treating it as protected from misappropriation during the limited period laid down in the 1988 Act. That would be so, even though the design in question would not begin to satisfy any requirement of novelty in the registered designs legislation."

7. Mr St Quntin says that in this case, although one can say that all of these glasses could be described as "tall-waisted beer glasses", given the close similarity between the defendant's copy and his client's product, the words of Mummery LJ are apt to cover this case, and the court would be entitled to conclude that the design in question was not commonplace and there were good reasons for treating it as protected from misappropriation for the limited period laid down by the 1988 Act.
8. It is fair to say that the design of the Aspen glass does bear overall similarities with all of the glasses I have been provided with. The designs all involve a waisted shape. Comparing Aspen to the Peroni one can see the following. The actual glass base of the Aspen design is thinner. The bottom radius is very close to being the same. The height of the Peroni glass, however, is noticeably taller than the height of the Aspen, and the shape of the top, as Mr St Quintin drew to my attention, is different. The Aspen involves a degree of waisting inwards again, or at least a parallel shape as the glass rises up to the rim, whereas the Peroni glass is essentially gently flared all the way up to the rim. An important point that Mr St Quintin emphasised is that the Peroni and indeed the Amstel are both glasses where the pint volume is below the rim of the glass. That is an important element in the design of these glasses from the point of view of those working in this field. Mr St Quintin also submitted that the general shape of the waisting, although of course at one broad level all rather similar, is different as between the Aspen and the Peroni.
9. The Amstel glass, very briefly, has again a generally similar waisted profile. It is taller than the Aspen, as the Peroni is taller. It has a pronounced flare at the bottom, rather different from the waisting of the Aspen glass.
10. The Cobra is a similar height to the Aspen. It is actually shorter, but this is one where the volume of the glass is one pint, rather than having a line to mark the volume of the pint. The diameter of its rim is larger, and Mr St Quintin pointed out that the upper end of the waisted part is straight all the way from the waist to the rim, unlike the Aspen.
11. The least similar glass of the four that I have been provided with is the Carlsberg glass. This involves a similar fluting arrangement to the Amstel at the bottom, and then a similar straight part from the waist up to the upper rim. It is also short like the Cobra.
12. It seems to me that Mr St Quintin's submission that he has an extremely strong case of infringement, and Mr Onslow's submission that the case is almost unarguably bad, are both wrong. This case is a good example of a properly arguable case of unregistered design right infringement. It would not be possible or sensible to attribute any great significance to the strength of it either way. There is plenty to be said on Mr Onslow's side and equally plenty to be said on Mr St Quintin's side, and I will not lengthen this judgment by getting into the merits of the case in any more detail than that. I am satisfied that there is a properly arguable case that this design is not commonplace, insofar as it has been copied by the defendants in the Aspire shape.
13. The case based on the registered design, in my judgment, is weaker than the case on the unregistered design right. That does not mean that it is a bad case, but it does mean that I do not need to consider it in any detail. I have a sufficient basis, on the finding I have already made, to move on to the next element of the question in relation to interim injunctions.
14. The next question relates to whether the claimants will suffer unquantifiable harm if I refuse an injunction. I should bear in mind that there has already been an injunction in place for a matter of a month or so since this matter came before me in December, but that does not seem to me to be a matter that is of particular relevance to the questions I have to decide. The bases on which the claimant claims that damages will not be an adequate remedy are set out in the evidence of Mr Dodd, and essentially they come down to four points. The claimant says that it will suffer a loss of exclusivity in the unique shape of its glass and that the damage caused by that will be impossible to quantify; that its reputation as a supplier of unique products will be damaged; that the high quality image of the Aspen glass that the claimant has sought to create by only marketing it as a glass and not a plastic vessel at this stage will be tarnished; that their efforts will be less effective if they have to deal with an identically shaped competitive product; that there is a direct loss of trade, but it is not readily quantifiable because identifying lost approaches to customers will be impossible, and there will be lost long-term sales; and, finally, the existence of two glasses of the same shape will encourage further manufacturers to create glasses of that shape.
15. In my judgment, these points, if I regard them as credible, would be a sufficient basis, based on the evidence of Mr Dodd, to say that damages were not an adequate remedy to the claimant. In particular, I would say that of the first three. The problem is this. When this application was first made, the claimant also relied on an allegation of passing off. That was based on some emails which it said were unsolicited emails from its distributors which commented on the similarity between the Aspen and the Aspire glasses. The claimant put those at the forefront of its case originally to support an interim injunction on the basis of a claim for passing off. Claims of passing off are often put in in support of applications for interim injunctions, because it is plain that usually the damage caused by passing off is unquantifiable and, therefore, a claimant seeking an interim injunction often tries, if it can, to push an allegation of passing off. No doubt that was a consideration that the claimant had in this case.
16. At the stage when it came before me before Christmas, Mr Onslow, who appeared for the defendant, laid down a gauntlet on the basis that his client's view was that these emails were not unsolicited at all. That would be very important, because it would fatally undermine the claimant's reliance on them to support a case of passing off. On the basis of that challenge, various directions were made by me, essentially to require the claimant, if it wished to pursue this point, to put in some evidence to substantiate the contention that they were unsolicited. Evidence came in, and the matter proceeded. The claimant relied on the emails.
17. What has now emerged prior to this hearing is that the defendant says that the emails cannot be genuine. The reason for that is this. The defendant's evidence is that they chose the name Aspire for their product on 1 October – the precise date does not matter, but the significance is that the name was chosen shortly before, but only by a matter of a few hours or possibly a day before, these emails were sent. Crucially the emails were sent before the name was given out outside the company. The defendant has also given evidence that although the design for the Aspire was chosen some months earlier, no commercial products made to the design were released into the market until after the date of these emails. So the essential point the defendant makes on the evidence is that these emails cannot be genuine, because they refer to the "Aspire" and comment on its similarity to the Aspen, using the name Aspire, and the distributors in question could not possibly have known what the design was like or that it was called the Aspire.
18. The claimant's position in response is that they do not accept this at all. They say that their emails are perfectly genuine, but they do not wish to get involved in this debate at this stage in these proceedings, and they have not sought further evidence from their distributors. When they sought evidence from their distributors, one of the distributors indicated that they did not wish to be involved in these proceedings, but two, on the other hand, were prepared to provide evidence to say that these emails were unsolicited. But the claimant does not wish to further trouble its distributors at this stage and harm its commercial relationships.
19. Mr Onslow says that this statement from the claimant that it has not asked at least these two distributors because it does not wish to trouble them further is not credible, because it would be a very simple matter. In the circumstances that have arisen it is not to be believed that the claimant has not asked. Accordingly one can infer that either it has asked and has received an answer it does not like, or it has not asked because it knows that it will receive an answer it does not like and, in any event, the claimant's position, and in particular the evidence of Mr Dodd on the witness statements before me, is incredible.
20. Mr Onslow submits that, by analogy with the position in summary judgment, as set out in the Court of Appeal in National Westminster Bank v Daniel [1993] 1 WLR 1453, the court should only accept evidence on a witness statement in circumstances like this if it is credible, or in another way of saying the same thing, if it is is fair and reasonable. Mr Onslow refers to the paragraph in the judgment of Glidewell LJ in National Westminster Bank v Daniel where he used the expression "fair or a reasonable probability of having a real or bona fide defence", to refer to the same question as whether what the defendant says is credible. This was in the context of deciding whether a defence in a summary judgment case was sufficient to stave off summary judgment and Mr Onslow says that a similar approach should apply to my considering the evidence on this application.
21. I accept Mr Onslow's submission that the court will not and should not take simply at face value what is said in witness statements on any application, and certainly not when an interim injunction is being considered pending trial. Describing the test as fair or a reasonable probability of being right is not a bad way of putting it, and I will accept that submission from Mr Onslow.
22. The question is whether it is fair or there is a reasonable probability that what Mr Dodd says is right on the basis of the material before me. In my judgment, it would, despite Mr Onslow's submission, be to conduct a mini trial of this material if I was to resolve what is going on, and I do not accept that this evidence before me renders it incredible that these emails were genuine. I am simply not in a position to resolve who is right about these emails. It may be that the claimants are right, and it may be that the defendants are right. There may well be matters that would go to trial, I do not know, although whether they bear on the merits of this case is another matter, but in order for me to decide that Mr Dodd's evidence is incredible, I would have to prefer the evidence of Mr Steer to Mr Dodd and, without any disrespect to either Mr Steer or Mr Dodd, I am not in a position to do so.
23. The position I have is that both sides are putting forward credible arguments about these emails, and to try and resolve it on this application is not fair and not possible.
24. That means that I do not have a basis on which I should say that the evidence of Mr Dodd is incredible, and that means that I have before me proper material on which I can place reliance, and I do place reliance, to say that the claimant will suffer uncompensatable harm by continued sales of this product pending trial.
25. There is no question that the defendants would also suffer a degree of unquantifiable harm in a similar way if I grant an injunction, since being enjoined from selling products will inevitably cause them to lose sales and no doubt cause other difficulties in the market. The question I have to decide in the end is on the general balance of convenience. Ultimately, one way of putting it is to consider how best and how fairly to hold the ring in this case, pending trial. In that respect, I do not accept Mr St Quintin's submission that I should take into account the merits of the case. Mr St Quintin put at the forefront of his case that his clients have a very high likelihood of succeeding in their claim for design right infringement, and that that was a matter I should take into account. It is in other cases something which can be taken account of, but I do not accept that in this case it is a matter that I can take into account.
26. The matter which it seems to me swings it and on which this case should be decided is the status quo. The position today is that the Aspire product has not properly been launched, and accordingly it would not be doing the defendant great harm if I grant an injunction pending trial, and, on the other hand, it would allow the status quo to remain until trial, when the matters can be sorted out on their merits.
27. Accordingly, I will grant an interim injunction pending trial in this case, supported by a cross-undertaking from the claimant, and I will hear the parties on that. The next step will be to make case management directions to bring this case to an orderly conclusion.