England and Wales Patents County Court

IN THE PATENTS COUNTY COURT
COMMUNITY DESIGN COURT

		Rolls Building 7 Rolls Buildings Fetter Lane London EC4A 1NL
		28/01/2013

His Honour Judge Birss QC :

Topic	Paragraph
Introduction	1
The witnesses	3
Community design right	8
The law	12
The facts	16
RCD 000578463-0002	17
Overall impression	30
Individual character	35
Infringement	38
RCD 000578463-0001	50
Overall impression	56
Individual character	59
Infringement	61
UK unregistered design right	66
The law	66
The facts	71
Commonplace and the design field	78
Infringement	87
Conclusion	121
Annexes	Annexes

Introduction

1. This is a design case about electric shower units. The claimant (Mira) is represented by Douglas Campbell instructed by Wragge & Co. The defendant (Bristan) is represented by Hugo Cuddigan instructed by Withers & Rogers. Mira relies on two Registered Community Designs (RCDs) Nos. 000578463-0001 and 000578463-0002, and UK unregistered design right (UDR). The UK UDR relied on relates to Mira's "Azora" product. Three Bristan products are alleged to infringe. They are called Glee, Joy and Smile.
2. Mira contends that all three Bristan products infringe both RCDs and UK unregistered design right. Bristan denies infringement and in the case of the UDR claim, contends the designs were derived independently in any event. Bristan contends that the RCDs lack individual character and are invalid. As for UDR, although Bristan accepts the overall design of the Mira Azora was not commonplace, certain elements of it, when taken independently as Mira do, are said to have been commonplace in the design field in question.

The witnesses

3. Mira called evidence from Mr David Pixton. He created the Mira designs which are relied on in this action and gave expert evidence directed to the design corpus (relevant to Community design right) and to whether design features were commonplace (relevant to UK UDR). Mr Pixton graduated from North Staffordshire Polytechnic (as it was then known) in 1986 with a BA in Product Design. He joined Mira in 1987 as an industrial designer and has been there ever since. Mr Cuddigan made no criticism of Mr Pixton and submitted he was careful and honest and gave his evidence impartially notwithstanding his employment by the claimant. I agree.
4. Bristan relied on witness statements from Mr Christopher Samwell, Mr Paul Helme, Mr Roderick Gibbs and Mr Robert Ginsberg. Neither Mr Gibbs nor Mr Ginsberg were cross-examined. Their evidence was concerned with whether two products were on the market (the Sirrus Nimbus shower and the Denia bathroom cabinet respectively).
5. Mr Samwell gave expert evidence about the design field and whether features were commonplace. He graduated from Leicester Polytechnic (as it was then known) in 1976 with a BA in Industrial Design with Engineering and then with an MA in the same subject in 1978. Since then Mr Samwell worked in a series of design consultancies and design partnerships. In the 1990s Mr Samwell's partnership (3CD) worked with Newteam Limited in the area of shower accessories. Newteam became part of the Bristan group. An award winning shower pump designed by 3CD in the early 1990s is still made by Bristan today.
6. Mr Campbell submitted that although Mr Samwell began somewhat defensively, he was generally a fair witness. I thought Mr Samwell gave his testimony fairly. Mr Campbell also submitted that Mr Samwell's evidence was based on a wrong approach in relation to commonplace, in its reliance on old and obscure designs. I will address that below.
7. Mr Helme is employed as a contract design engineer at Bristan. He studied for a BA in Industrial Design at Loughborough University between 2007 and 2011. In July 2009 until August 2010 he worked at Bristan as a placement year Design Engineer. During that time he worked on the designs of the Bristan products alleged to infringe. He denied copying the Mira Azora product. His evidence was criticised by Mr Campbell. It is convenient to deal with Mr Helme's evidence in its proper context as part of the UK UDR case.

Community design right

8. I will refer to the Community registered designs as RCD 0001 (No. 000578463-0001) and RCD 0002 (No. 000578463-0002). Mira contends that RCD 0001 and RCD 0002 are infringed by each of the Bristan Glee, Joy and Smile products. Bristan denies infringement and in each case raises issues on the true construction and scope of the registered design. Bristan also contends that neither RCD has individual character in the light of various items of prior art. The prior art consisted of a number of designs for bathroom cabinets, a picture frame and light fittings as well as shower units.
9. Against RCD 0001 the prior art relied on is:

i) Bathroom cabinet item 14 in the Argos Spring/Summer 2005 catalogue;

ii) UK registered design 2060740 (Horne) – picture frame

iii) RCD 515804-0003 (Massive) – light fitting

iv) RCD 437090-0024 (Massive) – light fitting

v) RCD 165790-0018 (Trilux-Lenze) – light fitting

vi) The HiB Denia bathroom cabinet.

10. Against RCD 0002 the prior art relied on is items (i) to (v) above and:

vii) The Sirrus Nimbus Electratherm shower unit

viii) UK registered design 2093843 (Matsushita)

11. An item of prior art which was pleaded was the HiB Montana cabinet but it was dropped at trial.

The law

12. Council Regulation (EC) No 6 / 2002 applies to this case. I will refer to the relevant articles but there is no need to set them out. Art 3(a) defines "design". Art 4 provides that a design will be protected by Community design right if it is new and has individual character. Novelty is defined in Art 5 and individual character in Art 6. No issue of novelty arises in this case. A design has individual character if it produces a different overall impression on the informed user (Art 6 and Recital 14). This includes considering the design corpus, the nature of the product and the industrial sector to which it belongs, and the degree of design freedom (Recital 14 and Art 6(2)). Art 10 provides that the scope of protection conferred by a Community design includes any design which does not produce a different overall impression on the informed user.
13. On the characteristics of the informed user, the claimant referred to the summary I set out in paragraphs 33-35 of my judgment in Samsung v Apple [2012] EWHC 1882 (Pat) (sitting in the High Court) approved in the Court of Appeal at [2012] EWCA 1339. It was meant to be a distillation of the learning from three cases: PepsiCo v Grupo Promer (C-281/10P) [2012] FSR 5 at paragraphs 53 to 59; Grupo Promer v OHIM [2010] ECDR 7, (in the General Court from which PepsiCo was an appeal) and Shenzhen Taiden v OHIM, case T-153/08, 22 June 2010. I will apply the same approach here. Mr Cuddigan also referred to paragraphs 56 to 58 of my judgment in Gimex v Chillbag [2012] EWPCC 31 in which I quote paragraph 66 of Shenzhen, that the overall impression formed by the informed user involves use of the corresponding product. I believe this point is unexceptional in law but raises an issue on the facts given that there is a dispute whether the Mira Azora is indeed a product which corresponds to the design.
14. In general, I will take the same approach as I set out in Samsung at paragraph 53 - 59.
15. Finally I remind myself that what really matters is what the court can see with its own eyes, the most important things are the registered design, the accused object and the prior art and the most important thing about each of these is what they look like. Although of necessity a verbalised list of features has to be gone through, it is the overall impression which counts and not that verbalised list (see Samsung v Apple in the Court of Appeal paragraphs 27-29).

The facts

16. The Mira Community registered designs are at Annex A and B. Annex C shows the Mira Azora and variants of that design known as Alero (white and black) and Galena, Annexes D, E and F are images of the Bristan Glee, Joy and Smile products. The prior art designs are shown or described in Annex G.

000578463-0002

17. Mira's better case on Community design right relates to RCD 0002 and I will start with that. RCD 0002 was applied for on 12^th August 2006. The indication of the product is "water heaters (electric)". The product is obviously an electric shower unit.
18. The design is a rectangular shaped unit with relatively sharp edges and corners. There is a flat front face. The housing behind the front face has two regions, a wider part at the back and a recessed part behind the front face. The recess can be seen clearly in the side views (images 0002.3, 0002.4 and 0002.5). These side images also make clear that the front face has chamfered edges at both the front and the back. The front face extends beyond the wider perimeter of the rear unit (see image 0002.2). The unit has two circular knobs and a small power switch on the front. The knobs have small pointers. The knobs are aligned vertically. They are located in the middle horizontally and in the middle and lower half of the unit vertically. There are four round circles ("pips") near the corners of the front face (see 0002.2). There are two tiny screws on the top of the housing (see 0002.4) and at the bottom a single screw and a fitting, probably for the shower hose (see 0002.5). In fact image 0002.1 has omitted the power switch from the front face but that is plainly an accidental omission.
19. The issue of interpretation of RCD 0002 relates to the dashed lines. Dashed lines can be seen in image 0002.1. There is a pair on the left of the front face running vertically and on the bottom running horizontally. This pair of lines represents the rear chamfered edges of the front face. There is also a single dashed line running around the inside edge of the front face. It marks the place where edge of the recess meets the back of the front face. Dashed lines are also seen in image 0002.2. This has two parallel tracks of dashed lines running around the inside of the perimeter of the image. The inner one marks the bottom of the recess, where it meets the back surface of the front face. The outer one represents the top of the recess or, in other words, the outer perimeter of the rear unit. Dashed lines are also visible in side images 0002.3, 0002.4 and 0002.5. Here the lines indicate the axles of the knobs, and the inner parts of the power switch and pips, all of which extend through the front face to the rear unit.
20. The defendant submits that the front piece in design RCD 0002 is made of glass or some other transparent or translucent material and that this can be understood from the images. The dashed lines are there to show that the front slab is transparent. The claimant argues that the dashed lines indicate the opposite – the front face is not transparent, hence the need for dashed lines to show what lies beneath the front plate.
21. At the forefront of its case the defendant relies on the fact that the Mira Azora shower has a glass front face which is transparent or at least translucent. It is a very striking feature of that product and excited comment when it was introduced. The defendant contends that since one is entitled to consider the product to which the design relates in understanding the design under Community law, when one takes the Azora into account it is plain that the front face of this design is transparent. I do not accept this submission. On this issue, to take the Mira Azora product into account in interpreting the design registration is to prejudge the issue. Until you know whether the design is transparent, how can one say whether the Mira Azora is a product made to the design? Moreover I note on the evidence that Mira has at least a few other shower designs with a similar shape which are either opaque (Galena) or much less translucent (Alero).
22. Paragraph 11.4 of the examination Guidelines for Community designs adopted by decision EX-03-09 of the President of OHIM of 9 December 2003 headed "Format of the Representation of the Design" provides:

The representation of a design should be limited to the features for which protection is sought. However, the representations may comprise other elements that help identify the features of a design for which protection is sought. In an application for registration of a Community design the following identifiers will be allowed:

1. Dotted lines may be used in a view either to indicate the elements for which no protection is sought or to indicate portions of the design which are not visible in that particular view, i.e. non-visible lines. Therefore, dotted lines identify elements which are not part of the view in which they are used.

23. Neither party submitted that it was mandatory to interpret dashed or dotted lines in only one of the two ways set out in paragraph 1. I agree. The Guidelines provide two possible interpretations for such lines and to that extent are helpful but they are not the only possible interpretations. The proper construction of the design must be decided by considering the design registration itself.
24. Mr Campbell points out that the scheme of the dashed lines showing what lies beneath the front plate is followed consistently throughout the images in RCD 0002. I agree. However I am not convinced that this helps. The fact that this element of the design registration is consistent as regards the front face is neutral.
25. Mr Cuddigan submits that the fact the front face has chamfered edges shows it is made of glass. I disagree. The chamfered edge might be taken as an indication that the material from which the front face could be something which would have very sharp edges unless they were chamfered but that could be true of opaque material as well. It does not indicate any form of transparency.
26. Mr Cuddigan's better point is that if the dashed lines are supposed to indicate what lies beneath a part of the unit which is not transparent, they are not used consistently. If that approach were followed generally, the hose attachment visible in 0002.5 should appear in image 0002.4 in dashed lines. Moreover it seems to me that although there could be some logic to showing the outer edges of the recess in image 0002.2 with dashed lines even if the front face is opaque, because those edges are visible features when the object is viewed from a different angle, why bother to show the axles of the knobs in 0002.3 (as well as the equivalent parts of the power switch and pips) in the side images? Those axles are never visible on Mira's case. If dashed lines are being used to depict features which are always invisible, there are all kinds of other features to be shown.
27. Mr Campbell points out that there is a convention in engineering drawing to show invisible features in this way. I agree but I do not think it assists. In one sense these are technical drawings but their function is to show a design, bearing in mind that Art 3(a) of the Regulation defines "design" as the appearance of the whole or part of a product.
28. Mr Campbell also referred to the boxes in which the Bristan Glee, Joy and Smile products are sold. These include a drawing of the front of the product with dashed lines on the front face to mark the edge of the rear unit. Since the front of the Bristan products is not transparent, these dashed lines therefore show features invisible from that angle. Mr Campbell is right but again I do not think it assists. The issue is the interpretation of the design registration. Dashed lines can be used to show features which are not visible but they are not necessarily used in that way in a given drawing.
29. In my judgment the dashed lines indicate that design RCD 0002 has a transparent or translucent front face. They show what is visible when looking at the article. The edges of the recess are visible through the front face. The rear chamfered edge of the front face is visible through the face from the front. The axles of the knobs (etc.) are visible through the front face material when viewed from the side. The axles are not visible inside the rear housing and that is why those dashed lines stop when they reach the rear unit. The hose attachment point is shown in 0002.5 and not shown with dashed lines in 0002.4 because it is visible in 0002.5 and invisible in 0002.4.

Overall impression

30. It was common ground that the informed user for both registered designs was a user of shower units. It was also common ground that in this field a side by side comparison was legitimate.
31. The defendant accepted that the Mira Azora design, including as it did a glass panel at the front, was a significant leap forward in design in relation to the prior design corpus of electric shower units. I agree. There was nothing remotely like it on the market prior to its launch. Most showers of this kind in the past were dull white boxes. They were often highly curved. The departure made by the design indicates that the design freedom actually available to designers in this field was very wide but that they had not been exercising that freedom before.
32. I would describe the overall impression produced by RCD 0002 as a striking one. It has a bold, design led, appearance with sharp straight edges and flat surfaces. The glass plate sits proud of the rear unit and the recess creates the impression that the plate floats in front of it. The transparency of the front face is very notable. The plate is held in place by the four pips. The simplicity of the overall shape is enhanced by the simple control knobs and power switch. They are vertically aligned, in the middle (looking from side to side) and in the lower half of the panel (looking up and down). The front view is the most important not least since in use the item is fixed to a wall.
33. Given my interpretation of RCD 0002 it is legitimate to use the Mira Azora product as an exemplar of the design. The glass is frosted from the front but clear on the edges. The knobs, power switch and pips are shiny metal or metallic silver. There are visible markings on the front but they are muted (temperature and flow markings and the name Mira Azora).
34. I would sum up the overall impression produced by RCD 0002 as a stylish design of shower unit with fairly sharp, straight edges, flat surfaces and a prominent transparent plate standing proud of the rear unit. The front has a neat central vertical line of round simple controls.

Individual character

35. In terms of prior art, none of the showers relied on had a glass plate on the front. The cabinet, picture frame and light fittings (luminaires) have a glass, mirrored or at least flat plate on the front but they each have a different overall impression from RCD 0002 not least because they are not shower units. They have no control knobs. Moreover none of them have the same relationship between the rear box unit and the front glass face found in RCD 0002 with a recess and a front face extending beyond the perimeter of the rear unit. In bathroom cabinet 14 and the picture frame the rear extends outside the perimeter of the front face. In the three light fittings there is a sort of recess but no rear box and the perimeter of the front face extends outwards to the same extent as the rear plate. The Sirrus Nimbus Electratherm is a single box with no raised front face and although rectangular, it has a generally bowed shape. The Matsushita design has no raised front face either and although rectangular, it has a rather rounded appearance.
36. In the course of argument Mr Cuddigan referred to the Mira Sport shower designs as prior art relative to the RCDs. I think that was a slip since the Mira Sport showers are only pleaded as relevant prior art relating to the issue of commonplace in the design field which applies to the UK UDR case. However nothing really turns on it since the Mira Sport designs are no closer to RCD 0002 (or RCD 0001) than the art which was pleaded.
37. RCD 0002 has individual character under Art 6 of the Regulation. It clearly produces a different overall impression on the informed user as compared to any of the prior designs. It has a relatively wide scope of protection.

Infringement

38. The Bristan Glee, Joy and Smile products are shown in Annexes D, E and F. Each product can be either black or white.
39. The Glee product has a relatively thin opaque plate on the front. It extends beyond the rear unit but there is no recess. The extent of the plate outwards is to my eye rather less than the corresponding distance in RCD 0002. The corners of the front plate (and the rear unit) have a pronounced radius. The front plate is the same material as the rest of the unit. There are no pips. The front plate has a rounded front edge but a rather sharp rear edge. The unit has two round control knobs and a smaller round power switch aligned in the same way as RCD 0002 albeit that I think the knobs are a little higher, relatively, up the front face as compared to RCD 0002. The power and temperature knobs have clear markings. The two knobs consist of circular parts more or less flush with the front face and raised rectangular handles to grip. There is a pimple on the end of the rectangular handle. There is a trade mark at the top of the front face. When switched on the Glee has a temperature display above the top knob. The front views in Annex D and E show the Glee with the power switched off and Joy with the power on.
40. There is no material difference between Joy and Glee.
41. The Smile unit is the same as Glee but has no temperature display and no power button.
42. Mr Cuddigan relied on the markings on the front panel (the temperature and flow markings around the knobs and the trade mark) as one of the material differences between the Bristan products and RCD 0002. I disagree. I think an informed user would expect markings of some kind on the front face even though they are not shown in the design. The actual Mira Azora product provides an example. To that extent design freedom is constrained by the need to have some sort of marking. There is no reason why the markings would have to be as muted as they appear in the Mira Azora. Perhaps very garish markings would make a bigger difference but these are not. They are conventional in form and I doubt the informed user would pay them any attention.
43. Other differences which I believe are minor and irrelevant are:

i) that the Bristan power button in Glee and Joy is larger than the one in RCD 0002, is concave rather than convex as in RCD 0002 and has no collar, unlike RCD 0002;

ii) that the edges of the front plate of the Bristan products have a rounded front and sharp back rather than the chamfered edges of the front plate in RCD 0002; and

iii) that the Bristan front plate extends less far beyond the perimeter of the rear unit than RCD 0002.

44. The important differences relied on by Bristan are:

i) The front panel in the Bristan designs is opaque, unlike the transparent panel in RCD 0002.

ii) The front panel in the Bristan designs is thinner than RCD 0002 and there is no recess.

iii) The rounded corners on the Bristan products as compared to the sharp corners in RCD 0002 (both front plate and rear unit).

iv) No pips in the Bristan products

v) In Glee and Joy, the presence of a prominent temperature display, unlike RCD 0002.

vi) The different shape of the knobs: in Bristan flush circles with a rectangular handle as opposed to smooth cylinders in RCD 0002. In Smile there is no power button.

45. In terms of their overall impression, the three Bristan products are also a departure from the standard shower units as they existed in 2006. Their designs are based on a flat front plate which rests on a smaller rear unit. There is no visible bowing of the front plate and the only curve in the form of the units comes from the rounded corners. The three knobs are in the lower middle in a vertical line.
46. However without the striking transparent front panel, it is very hard to see how the Bristan designs can be argued to produce the same overall impression as RCD 0002. The transparent plate is what gives the design its striking individual character as compared to existing shower designs. A product without that feature simply does not create the same overall impression. Of the remaining points, I think (ii), (iii) and (iv) have some, albeit a lesser, significance. Point (vi) (different knobs) is a very weak point. I think the knobs contribute to a similarity with RCD 0002 albeit they are not identical.
47. Mr Campbell submitted that it was not legitimate to take into account point (v) (temperature display) since it was only visible in use. Mr Campbell took a point of law. He submitted that Art 3 (a) of the Regulation set out a limited list of things which give rise to the appearance of a product. The list is limiting because of the words "resulting from". The list of things which the appearance can result from (lines, contours, colours, shape, texture and/or materials) does not include an appearance caused by switching it on. Mr Cuddigan submitted it was legitimate to consider the display since the informed user experiences the product through use. I suspect Mr Cuddigan is right but I did not hear full argument on the point. Given the views I have formed without considering the display, it would not make any material difference either in relation to RCD 0002 or RCD 0001, so I will not decide the point.
48. At one point in the argument Mr Campbell submitted that a properly written statement of the overall impression of the design would also cover the Bristan products. As it happens I do not agree because the transparent plate is part of the overall impression produced by RCD 0002 but even without that point, I do not accept this is a legitimate approach. The Bristan product and the registered design are based on a flat front plate which rests on a smaller rear unit. However they still look different to my eye.
49. I reject the case of infringement of RCD 0002 by any of the Bristan products.

000578463- 0001

50. RCD 0001 was also applied for on 12^th August 2006. The indication of the product is also "water heaters (electric)". Again the product is obviously an electric shower unit.
51. The shape of the object depicted in the images for RCD 0001 is exactly the same as for RCD 0002 (save that the power button was not mistakenly left off image 0001.1). There is an issue of interpretation of RCD 0001 which also relates to dashed lines.
52. None of the dashed lines in RCD 0002 appear in RCD 0001 and so those issues do not arise. In RCD 0001 the knobs and power button are marked with dashed lines. Mr Campbell submitted this meant they were an optional feature, not essential to the design. Mr Cuddigan submitted they were features for which no design protection is sought and referred to Sphere Time v OHIM (General Court T-68/10, 14^th June 2011). In that case the design was for a lanyard carrying a watch. The attachment clip and part of the watch face were shown in dashed lines and were held not to form part of the elements that are protected by the design. However Sphere Time is simply a case in which that conclusion was reached. It does not purport to lay down any general principle on the issue.
53. Mr Campbell characterised the issue as there being three options: first, no knobs; second, knobs present; or third, knobs may or may not be present. He said his case was the third option whereas Mr Cuddigan's was the first option. Mr Campbell also argued that the dashed lines would be understood to mean that it was the knobs depicted which were optional. In other words to employ the design one could use those very knobs, or have no knobs at all, but what one could not do was use other different knobs.
54. Mr Campbell also appeared to argue that the extent to which another product might fall within the scope of protection of the registration was to be considered by considering both options. So, for the prior cabinets he argued the point worked the following way. Mr Cuddigan submitted that on his construction of RCD 0001, the design is getting very close to these prior designs. Mr Campbell did not agree. He argued that whereas RCD 0001 had optional knobs, in the prior cabinet designs there was no such option. No optional knobs were disclosed in the prior cabinets. Moreover even if the prior cabinets were held to deprive the no-knob option of RCD 0001 of its individual character, that left unscathed the alternative option of RCD 0001, i.e. the version with the knobs intact.
55. I do not accept Mr Campbell's submissions on the dashed lines in RCD 0001. I am far from clear it is a tenable argument but even if it is tenable, I prefer Mr Cuddigan's submission. The dashed lines in RCD 0001 are not depicting a transparent part nor are they showing features which are not visible. The design registration would not be understood by an objective reader as attempting to cover two distinct scopes of protection, one with knobs on and one without. An objective member of the public looking at the register (or an informed user) would understand that these dashed lines are showing elements for which no protection is sought. Thus the scope of protection of RCD 0001 does not include consideration of the knobs on the front panel of a shower unit.

Overall impression

56. As compared to prior shower designs, RCD 0001 is unusual albeit it does not represent as great a departure as that represented by RCD 0002. Again it shows that the design freedom was in fact quite broad even though that breadth was not exercised much in the past.
57. RCD 0001 has sharp straight edges and flat surfaces. The front plate is not transparent. It has a degree of depth to it and sits proud of the rear unit. It has chamfered edges. The recess behind the plate creates the impression that the plate floats in front of the rear unit. The plate is held in place by the four pips. The front view is the most important not least since in use the item is fixed to a wall but the fact that no protection is sought for the knobs or the power switch makes the front very blank and draws more attention to the pips and the recessed sides.
58. I would sum up the overall impression produced by RCD 0001 as a stylish design of shower unit with fairly sharp, straight edges and flat surfaces and a prominent front plate standing proud of the rear unit with pips on the front and a recessed area between the plate and the rear unit.

Individual character

59. No prior shower unit designs are pleaded against RCD 0001. The prior designs relied on are two cabinets (mirrored Argos item 14 and the Denia), the picture frame and the three light fittings. I reject the argument that RCD 0001 lacks individual character over these designs. The light fittings have pips and have a front face mounted proud of a rear plate. They are not the same shape as RCD 0001 with its recess on a rear box unit. Argos Item 14 has pips but no clear rear box unit. The back panel extends beyond the perimeter of the front plate. The front plate also has a frosted border detail. The Denia cabinet has a rear box unit but no clear recess and no pips. Its front plate has curved corners. The picture frame has no rear box or recess at all. They all produce a different overall impression from RCD 0001.
60. Thus while the difference between the RCD 0001 design and prior shower designs might militate in favour of a wide scope of protection, the closeness of the features for which design protection is sought to known bathroom cabinets and, to a lesser extent, known light fittings, tends to reduce that scope of protection.

Infringement

61. Subject to the temperature display point (which I need not take into account) there is no difference between the Bristan Glee, Joy and Smile designs for this purpose.
62. I have described the Bristan designs already. For the purpose of infringement of RCD 0001 I should ignore the knobs and power switch.
63. The important similarities are that the Bristan designs are rectangular and have a flat front plate above a rear unit. The front plate extends beyond the perimeter of the rear unit. I do not think the difference in detail between the chamfered edges of the front plate of RCD 0001 and the edges of the front plate of the Bristan products is significant. The key differences are the lack of pips, the thin front plate with curved corners and the lack of a recess.
64. In my judgment the Bristan products produce a different overall impression from RCD 0001. The differences are too great. Although both Bristan and RCD 0001 have a front plate on a rear unit, beyond that the way in which the products are realised is very different. Without seeking protection for the knobs etc., the pips take on more significance on the front face of RCD 0001. They are absent. The shape of the front plate itself, mounted on a recess, is a key element in the appearance of RCD 0001 but the Bristan products have a much thinner plate with curved corners and no recess at all.
65. I reject the infringement case over RCD 0001.

UK unregistered design right

The law

66. UK UDR is defined in section 213 of the Copyright Designs and Patents Act 1988 as follows:

213.— Design right.

(1) Design right is a property right which subsists in accordance with this Part in an original design.

(2) In this Part "design" means the design of any aspect of the shape or configuration (whether internal or external) of the whole or part of an article.

(3) Design right does not subsist in—

(a) a method or principle of construction,

(b) features of shape or configuration of an article which—

(i) enable the article to be connected to, or placed in, around or against, another article so that either article may perform its function, or

(ii) are dependent upon the appearance of another article of which the article is intended by the designer to form an integral part, or

(c) surface decoration.

(4) A design is not "original" for the purposes of this Part if it is commonplace in the design field in question at the time of its creation.

67. I attempted to summarise some aspects of the law relating to s213 in Albert Packaging v Nampak [2011] EWPCC 15 and the Court of Appeal (Lord Neuberger MR) dismissed an application for permission to appeal from that judgment at [2012] EWCA Civ 143. At paragraph 14 of my judgment in Albert Packaging (and see also the cases cited in paragraph 15) I explained that the definition of "design" in s213 allows a claimant to assert design rights in only certain aspects of a larger article, that it is important to identify precisely which aspects of shape or configuration are relied on and that the issue of originality/subsistence needs to be considered separately for each aspect relied on and the question of infringement is crucially dependent on what aspect is alleged to have been copied. These observations are relevant in the present case because Mira defines the aspects of the overall design relied on in various ways.
68. Section 213(3) is not relevant to the present case but s213(4) is important. Bristan contend that a number of the designs relied on are commonplace in the design field in question and therefore not original. I attempted to summarise the law relating to s213(4) in Albert Packaging at paragraphs 27-31. Mr Campbell submitted that this summary was correct and Mr Cuddigan did not dissent but reminded me of a further observation of Laddie J in Ocular Sciences v Aspect Vision Care [1997] RPC 289 at 429 which is relevant when combinations of features are relied on. In Ocular Sciences Laddie J said that "In many cases the run of the mill combination of well known features will produce a combination which is itself commonplace". I will apply the same approach in this case as in Albert Packaging, bearing in mind this further point too.
69. Section 226 defines acts of primary infringement as follows:

226.— Primary infringement of design right.

(1) The owner of design right in a design has the exclusive right to reproduce the design for commercial purposes—

(a) by making articles to that design, or

(b) by making a design document recording the design for the purpose of enabling such articles to be made.

(2) Reproduction of a design by making articles to the design means copying the design so as to produce articles exactly or substantially to that design, and references in this Part to making articles to a design shall be construed accordingly.

(3) Design right is infringed by a person who without the licence of the design right owner does, or authorises another to do, anything which by virtue of this section is the exclusive right of the design right owner.

(4) For the purposes of this section reproduction may be direct or indirect, and it is immaterial whether any intervening acts themselves infringe the design right.

70. I attempted to summarise the legal approach to infringement of UK UDR in Albert Packaging at paragraphs 36 to 39. Again Mr Campbell submitted that the summary was correct and Mr Cuddigan did not dissent. I will apply the same approach in this case. The summary ends with the following, which I have edited to use the names of the parties appropriate to this case:

39. On the basis of these authorities, the approach I will take to infringement is as follows. First I will consider whether the similarities between the [Bristan] product complained of and the [Mira] design (as well as the possibility of access) call for an explanation. In other words - do they raise an inference of copying? In considering that matter I will bear in mind that functional features may be similar because they are performing a function not because of copying. If an inference is raised then I will consider what explanation [Bristan] put forward. In the end I will compare the [Bristan] product and the design objectively, reminding myself that for infringement, the relevant article must be produced exactly or substantially to the design.

UK UDR – the facts

71. Mira relies on UK UDR relating to the Mira Azora product. This product was designed by David Pixton, a UK citizen acting in the course of his employment. There is no question that any UK UDR which subsists will belong to Mira. The design process started in May-June 2004 and articles made to the design were first sold in October 2006. Two design documents recording the design were relied on. They were a CAD drawing of the front panel of the Mira Azora produced by Mr Pixton in December 2005 and an assembly drawing produced under his direction in May 2006. The drawings show the same article as is depicted in the Community design registration documents and for the purposes of UK UDR, the images of either RCD are a convenient illustration of the shape and configuration of the Mira Azora product (for this purpose I can ignore the disputes about the dashed lines).

The aspects of shape or configuration relied on

72. The aspects of shape or configuration relied on by Mira as "designs" for the purposes of s213(2) are defined in paragraph 14(1) of the Amended Particulars of Claim as follows:

(1) The claimant relies on the design of the following aspects of shape and configuration, both individually and in any combination thereof:

a) The whole of the said shower unit.

b) The rectangular "tombstone" appearance of the unit when viewed from the front.

c) The two vertically aligned circular control knobs, one located at the centre of the front face and the other below it.

d) The circular power switch and associated collar which is vertically aligned with and located below the two circular control knobs.

73. Although this plea encompasses quite a number of combinations, this did not cause any real difficulty. Aspect (a) is really separate from aspects (b) to (d) and it does not make sense to combine it with the others. Aspect (d) is not independent of aspect (c) and it does not make sense to separate it from aspect (c).
74. A problem which did arise at trial was as to the meaning of features (b) and (c). Mr Cuddigan submitted that Mira's reliance on two points was not within the case as pleaded and was not open to Mira. The major argument was about the presence of a flat front in (b) but there was also a point on whether the two control knobs were the same size in (c). It is true that neither the word "flat" nor a reference to size appears in paragraph 14(1) of the pleading but Mr Campbell did not accept that this meant his client could not rely on the points. He submitted that the purpose of identifying the design was not to set up a form of words to be argued over but to identify what is relied on and he pointed out that Bristan's Amended Defence and Counterclaim had engaged with the flatness of the front panel of the allegedly infringing products, arguing that they were not flat (paragraph 8(xi), referred to in relation to UK UDR at paragraph 11). There was also a debate about whether the word "tombstone" included the idea of a flat front. Mira said it did and Bristan said it did not. (I did not regard the cross-examination on that issue to be of assistance.)
75. Mr Campbell is right that the purpose of identifying the design is to identify what is relied on. In my judgment the claimant adequately identified that it was relying on the flat front of the shower unit. I think the reference to "tombstone" conveys that point and even if there was any genuine doubt about the matter, no injustice is done to the defendant in accepting that a flat front is part of the claimant's case on aspect (b). The defendant has engaged with the issue and was ready to do so at trial. However I do not accept that the fact the knobs are the same size can fairly be said to be part of aspect (c). It is simply absent.
76. Of course in any event the flat front and similarity in size of the knobs form part of the shape and configuration of the whole unit (aspect (a)) but that is a different matter.
77. Given that both Community registered design rights and UK UDRs are relied on it is worth reminding myself that differences in these laws mean that some aspects of what one would colloquially call the "design" of the Mira Azora which played a part in the case on the RCDs are irrelevant to the UK UDR case. The fact that UK UDR relates to shape and configuration means that the fact that the front panel of the Mira Azora is made of glass is irrelevant. It was common ground before me that transparency is not an aspect of shape and configuration.

Commonplace and the design field

78. The design field in question in this case is either shower units or electric shower units or possibly electric water heaters for showers. Nothing turns on the difference between these formulations. I believe the fairest way of putting it is "electric shower units".
79. There was no dispute that the Mira Azora design as a whole (aspect (a)) was not commonplace. Although there was a dispute about how to characterise the design as a whole I can deal with that below. Plainly the design as a whole was not commonplace. Nor was there any dispute that the combination of aspects (b), (c) plus (d) together was not commonplace.
80. Mr Samwell's opinion, relied on by Bristan, was that aspect (b) and aspect (c) individually were commonplace and so was the combination of aspects (b) plus (c). As regards aspect (d) (which is the same thing as aspect (c) plus (d)) Mr Samwell said that although he thought a circular power switch was an obvious choice, a circular power switch with a collar arranged beneath two vertically aligned circular control knobs as described in aspect (c) was not commonplace.
81. Aspects (c) and (d) relate to the shape and location of the control knobs and power switch. On this, Mr Pixton accepted that the vertical alignment of knobs was commonplace and so was aligning the power button with the control knobs. He also accepted that using circular control knobs was commonplace and, although a lozenge shaped power button was the most popular form, a circular power button with a collar was commonplace too. I find that all these aspects are indeed commonplace.
82. Mr Pixton was also asked about combination of the vertically aligned knobs and power button along with their horizontal location on the front panel of a unit. Mr Campbell submitted at least part of Mr Pixton's evidence on this had missed a subtlety in Mr Cuddigan's questions about whether they still related to lozenge shaped power buttons. I do not agree. I understood Mr Pixton's opinion to be that, although off centre alignment of knobs was more typical, nevertheless combinations including central alignment (horizontally) and a circular power button were just examples of a number of available solutions. Mr Campbell also pointed out that nowhere in the evidence had Bristan produced an existing product which embodied the particular set of features and that many of the individual examples relied on by Mr Samwell were old or obscure products. That is true and I bear particularly in mind Mr Samwell's own evidence about aspect (d). However, these features just relate to the shape, alignment and location of the controls, isolated from the remainder of the shape of the shower unit as a whole. Looked at in isolation from other elements of the overall Mira Azora design such as the "tombstone" appearance of the unit and even the sizes of the knobs, aspects (c) and (d) would not excite any attention from those working in the field of electric shower design. In my judgment aspects (c) and (d) are commonplace. If they were not commonplace then Mira would have a property right which would apply to those aspects reproduced in combination with any shower unit at all, even units with a completely different shape from the Azora. That would be a property right of surprising scope.
83. That leaves aspect (b). Although Mr Samwell thought aspect (b) (and the combination (b) plus (c)) was commonplace, that was based on his approach to aspect (b) which did not take into account the flat front. He took "tombstone" in aspect (b) to mean just a shower with a rectangular shape and predominantly straight sides and he referred to a number of sharp cornered square box-like designs. A number of the designs relied on by Mr Samwell were themselves quite old or obscure showers. Mr Cuddigan pointed out that the fact that a given shower is obscure does not matter if it is used just as an example of a particular feature. I accept this as far as it goes but nevertheless it is not irrelevant either. If the only place a defendant can find a supposedly commonplace feature is in an old and obscure product then that will often tend to imply that the feature is not as commonplace as the defendant would suggest.
84. Mr Pixton's view was that no showers before the Mira Azora had a tombstone appearance (as he defined it, including the flat front). He also pointed out that while rectilinear shapes were available many were softened with curvature either on two or all four sides.
85. In my judgment aspect (b), referring as it does to a slab like rectangular flat fronted unit, was not commonplace in electric shower design at any material time. It follows that the combination of (b) plus (c) is not commonplace either.
86. Thus I find that Mira has UK UDR in the following four designs: aspect (a); aspect (b); aspects (b) plus (c); and aspects (b) plus (c) plus (d). I reject aspect (c) alone and I reject aspects (c) plus (d) (without (b)).

Infringement

87. Like copyright and unlike Community registered design right, copying is an essential element of UK UDR infringement. Bristan contended that the Glee, Joy and Smile products were designed independently of the Mira Azora and therefore could not infringe regardless of how similar they may or may not be to Mira's designs. Bristan also contended that in any event the products were not articles made exactly or substantially to the designs Mira rely on.
88. Before I deal with Bristan's positive case of independent design I will consider whether and to what extent an inference of copying can be drawn. In order to do this I need to put the Mira Azora product and Bristan Glee, Smile and Joy products the their context.
89. Mr Pixton described the UK market for showers in 2003-2005. The sorts of products available were power showers, mixer showers, digital showers and electric showers. In electric showers the water is heated inside the unit itself which is supplied with a mains water supply and mains electricity. The other kinds of product are supplied with water heated from another source such as a domestic boiler. Water in power and mixer showers is blended by mixers in the showering area. Mixers are small and usually chrome plated. Power products have a mixer mechanism with a shower pump. In digital showers the water is blended remotely.
90. In 2003/4 Mira and Triton dominated the UK market for electric showers. Between them they had about two thirds of the market. For the 20 years until 2006 what Mr Pixton called "white box" designs accounted for 80 to 90% of the electric shower market. These were dull generally cuboid box like designs made of white plastic. There was a general lack of design attention given to the external appearance of the product. Mr Pixton gave an example of a typical popular product of the period, the Triton T80si. It is shown in Annex H. It has no distinctive shape or form.
91. The Mira Azora was launched in 2006. Mr Pixton explained that he deliberately created the product to be minimalist, stylish and modern looking. The sort of customers it was aimed at were those who put design preferences ahead of price considerations, they were intended to be a modern, fashion conscious group whose choices were influenced by aesthetics. The design was intended to have an overall clean, uncluttered rectangular appearance with symmetrical features making a fresh simple and well proportioned product which was different from what had gone before.
92. It is clear on the evidence before me that the Mira Azora was a very significant departure in the field of electric showers when it was launched in 2006. It made a significant impact in the UK market and achieved substantial sales.
93. In 2008 Mr Pixton was aware of the launch of a product he regarded as very similar to the Azora by Mira's competitor Triton. This was the Triton Inscription. Mira sued Triton in the High Court and the proceedings were settled. The Triton product was something which Bristan were aware of when the relevant products were designed but since it did not form part of Bristan's case on independent design to suggest that anything relevant was derived by Bristan from the Triton product, whether or not the Triton Inscription reproduced any features of the Azora is irrelevant.
94. Bristan is a competitor of Mira. Its employees would have been very well aware of the Mira Azora from 2007 (I leave Mr Helme to one side). The Glee, Joy and Smile products were designed in 2008/2009 and launched in 2010.
95. The three products are variants of the same single design and for present purposes I will refer only to the Glee product. There are many differences in detail between the Glee and the Azora products. The Glee unit is made entirely of plastic, there is no glass slab. The corners of the Glee front plate have a radius as do the corners of the rear unit whereas the corresponding corners of the Azora are fairly sharp. The Glee front plate is much thinner than the glass slab on the Azora and is not bevelled in the same way. There is no recess behind the front plate in the Glee, unlike the Azora. The control knobs in the Glee are flush with the front plate with bars to grip whereas the Azora knobs are cylindrical. The power button has no collar on the Glee unlike the Azora (and Smile has no power button at all). The Glee and Joy have a temperature display when turned on.
96. However despite all these differences, the overall similarities between the Glee and the Azora are striking. Like the Azora and unlike normal showers of the period, the Glee unit is a straight sided rectangular unit with a distinct flat front face plate which extends beyond the perimeter of the rear unit. Combined with this, the knobs and power button consist of two identical circular knobs aligned vertically, with the upper knob located at about the middle of the front face and a smaller circular power button. Particularly bearing in mind the context and the UK market for electric shower units in the period, I think there is a strong inference of copying. It is very hard to believe that the similarities which exist between the Glee and the Azora, relating as they do to many of the features which made the Azora such a departure in shower design, could be a coincidence. The key similarity is the flat front face on a straight rectangular unit but the similarities also include the combination of the arrangement and location of the knobs and power button with the distinct flat front face. Although aspect (c) is commonplace when regarded in isolation, its combination with the flat front face is not. The same goes for aspect (d).
97. To avoid a conclusion that the Glee reproduces these features from the Azora would require a highly cogent and credible explanation.
98. Bristan's evidence of independent design was given by Mr Helme. He summarised the chronology of Bristan's design process as follows. Until the products in this case, Bristan had not created an electric shower design. The ones it sold had been bought in from others, including Newteam. In 2008, before Mr Helme joined Bristan, the company established a design brief to produce a new range of electric showers to replace their current products. This document was dated 28^th November 2008. In its "styling indicators" the document states that the size is restricted by the technical specification but not the shape, refers in general to what Mira and Triton currently offer and ends with the words "Ipod style?". The brief was approved by four Bristan staff included product manager Barbara Jonas and design engineer Anthony Smith.
99. The initial design work was done by Matthew Churm. Just as Mr Helme was a Loughborough University design placement student, so too was Mr Churm, albeit Mr Churm was one academic year ahead of Mr Helme. Mr Churm began work in July 2008 and left Bristan in July 2009. He produced design proposals in a document marked "Copyright 2009". These proposals include some quite radical ideas including ovals, a flat panel cross and "fun" curved faces. He also produced a "developed concept", a picture of which was in evidence. The housing of the developed concept has a fairly conventional rounded form. It is essentially rectangular with knobs aligned vertically in the middle, a lozenge shaped power button underneath and a temperature display above. There is an inset region in the centre of the unit around the controls.
100. Mr Helme joined in July 2009. He overlapped with Mr Churm for one week. Hitherto Mr Helme had had no involvement with bathroom design. He knew he was to work on the electric shower project and worked closely with Mr Churm. Initially his focus was on the internal workings of the unit. He then expressed the view that Mr Churm's developed concept was not as modern looking as it could be and he discussed his conclusions with the team. The team decided that he should develop new concepts with a focus on being "shiny, sleek and modern". Mr Helme then produced some initial design concepts by 9^th October 2009 and then later some final design concepts. Since the internal components had been developed based on Mr Churm's design, the positioning of the knobs and power button could not be changed much. There was a dispute about this but I think the position was fairly clear. Mr Churm's design set the relative positions of the knobs and power button. As a group they could be moved up and down vertically somewhat by moving the front face up and down relative to the internal components but otherwise they were fixed in place.
101. After the shower team had picked their favourite concepts an internal Bristan focus group was set up and presented with proposed designs. The presentation boards given to the focus group were in evidence. These boards include three of Mr Helme's designs. After the focus group it was decided to develop two of them further. Relatively small changes were made and the Bristan products were the result.
102. Mr Helme said that intention when creating the design was to emulate the design of modern consumer electronics businesses such as Apple, Samsung and Sony. He became aware of the Mira Azora and Mira Galena products after he had created his initial design concepts (9^th October 2009) but denied being aware of them before that. He said that they had samples of the Mira Sport and Triton T80Z products but denied having any others. He also said that those initial design concepts did not change substantially afterwards. He said that all of the design concepts were his original work and he did not copy the Mira Azora or Galena.
103. Mr Helme was subjected to a searching but fair cross-examination by Mr Campbell. I will not rehearse the whole cross-examination but mention only certain particular points. It was put to Mr Helme that he had in fact come across the Azora in September 2009 before his initial designs were made. He denied that. It was put to him that he was lying about the origin of a raised "volcanic" border feature around the knobs in his initial designs. Mr Helme said it came from a "boss" feature in a Samsung phone shown in a document called a DPS Presentation Log and maintained his evidence on the point. It was put to him that he was lying when he said that his design was restricted by Mr Churm's positioning of the knobs. Mr Helme denied that as well.
104. Mr Campbell submitted that Mr Helme was an unsatisfactory witness and should not be believed. I did not detect anything in his cross-examination which could support that conclusion. In my judgment Mr Helme was at all times seeking to tell the truth and to give his evidence fairly. There is no material which contradicts his testimony that he had not seen the Azora until after 9^th September 2009. I am sure Mr Helme was giving honest evidence when he said that he had not copied to the Azora product in producing the various designs which he did produce. If the case rested only on Mr Helme's credibility then there would be much to be said in Bristan's favour.
105. However Mr Helme was not the only relevant person in this process. It is not in dispute that the project began before Mr Helme was involved. Mr Helme's evidence referred to a shower team. I have heard no evidence from Mr Churm nor from Barbara Jonas or any of the other staff at Bristan who were involved in this project overall. Some are no longer employed by Bristan but I have not been given any reason why they could not have provided a witness statement.
106. These other members of Bristan staff clearly had an important role to play in guiding the overall process, in selecting and modifying features proposed by Mr Helme. Mr Helme's initial design concepts shown in the document dated 9^th October 2009 included designs with rectangular flat front plates, front plates with an inset region around the controls, front plates which are curved or angled and front plate with angled lower corners. The knobs often have a raised "volcanic" border. A design marked "concept 2" was the one most liked by Barbara Jonas. This led to the further designs produced by Mr Helme later. The volcanic border was dropped because Ms Jonas did not like it although she did like the flat panel of concept 2. Mr Campbell suggested to Mr Helme that Ms Jonas must have pointed out to Mr Helme that concept 2 looked most like the Azora but he denied it and I have no reason to doubt his denial. Mr Helme said that no-one at Bristan had mentioned any similarity between the Azora and his designs to him and again I have no reason to doubt his testimony. However Mr Helme naturally accepted that he would not have known if others at Bristan had this sort of discussion in his absence.
107. The staff at Bristan who were overseeing the project must have been well aware of the Mira Azora product. I infer Mr Churm will have been well aware of it as well. It seems to me that whoever read or approved the design brief for this project (and that includes Barbara Jonas) with its reference to "Ipod?" and the manuscript comment about top line or next best products, will have had the Azora well in mind.
108. I am sure that Bristan encouraged their new young designer Mr Helme to focus on shiny, sleek, and modern designs and to take his inspiration from Apple, Samsung and Sony consumer electronics. From his own perspective Mr Helme's motives are pure. But it is not a coincidence that a person experienced in the UK shower market in 2008, aware of the Mira Azora and the impact it had made, is encouraging a young designer in this way. As I have found, Bristan were well aware of the Azora and I am sure its staff understood the significance of what they were encouraging Mr Helme to do. Whoever selected concept 2 from Mr Helme's proposals of 9^th October 2009 and then also removed the volcanic knob border to make the front panel completely flat will have known that they were selecting a design most like the Azora from Mr Helme's proposals and changing it in a way which moved it even closer to the Azora.
109. There are no documents which prove that copying took place and Mr Cuddigan submitted that a large number of documents had indeed been disclosed. On the other hand some emails were not able to be disclosed because of computer failures (Mr Helme) or because Ms Jonas had deleted her old emails when she left Bristan. Mr Campbell suggested this was suspicious but I have no reason to think so. I find the disclosure or lack of it does not assist either way.
110. Mr Cuddigan submitted that Mr Helme's evidence showed that there was no outside interference with his design work, no "puppet master" choosing the features he wants. I do not accept that it is that simple. As I have shown above Mr Helme's evidence in fact accepts that some design decisions were not made by him. Some were made by others choosing from options he presented (such as concept 2). Others, like the location of the knobs and power button, were not designed by Mr Helme at all. Mr Cuddigan submitted there was no proper basis for concluding that the location of the control knobs, which was designed by Mr Churm, was copied from the Azora. I do not accept that since I have no evidence from Mr Churm at all.
111. Mr Cuddigan also submitted that if Bristan were going to have embarked on a copying exercise in this way it would have been a pretty cynical exercise and references to the Azora would appear all over the paperwork, when they do not. The flaw in this argument is that it assumes that the only alternatives are independent design by Mr Helme or a wholesale and deliberate attempt from the outset to reproduce the Azora and set up an innocent design student as a sort of cats paw in the process. But these are not the only possibilities. I have no direct evidence of Bristan's initial motives beyond the design brief. That document seems to me to support the idea that Bristan wanted a new design which would at least compete with the existing top line products, the prominent one at the time being the Azora. They must have had the Azora in mind. When the Bristan staff preferred one of Mr Helme's proposals to another they do not need to have been cynically thinking to themselves that the objective was to disguise an attempt to copy the Azora. I expect they selected features from his proposals because they liked them but I expect they liked them because, whether consciously or not, they are features of the Azora.
112. As a young designer at the start of his career Mr Cuddigan submitted that Mr Helme would have no motive to copy. I accept that but I am not satisfied that Bristan's evidence as a whole is enough to outweigh the inference of copying in this case. A finding of copying would not undermine Mr Helme's credibility. As I have said I am sure Mr Helme gave honest evidence but that does not mean he was necessarily right about everything. When he said he did not copy the Mira Azora, I do not doubt his honesty. When he referred to Apple products as an example of the use of a thin projecting front face to create a slim appearance, again I accept what he says but I am not satisfied that Mr Helme's testimony ruled out the idea that, unbeknownst to him, the use of this element by him could have been influenced by others at Bristan who themselves had seen the concept in a shower unit in the Azora products.
113. Although the legal burden is on Mira on the issue of infringement, the evidential onus to rebut an inference of copying here is on Bristan. Bristan has not satisfied me that the design of the Glee, Joy and Smile products was independent of the Mira Azora. In my judgment the similarities which exist between these products arise because of copying.

Exactly or substantially to the design

114. Mr Cuddigan submitted that the issue of copying had to be addressed in relation to the individual designs relied on. I agree but I have done so compendiously. I find all the similarities are the result of copying. That is so whether one is considering aspect (a) or (b) or, in relation to aspects (c) or (d), those elements combined with aspect (b). The remaining question is whether the Bristan products are indeed products made exactly or substantially to the designs relied on.
115. The definitions of the designs in aspects (b), (c) and (d) were obviously created with an eye on the claimant's case on infringement but, subject to the various safeguards built into the law of unregistered design right, that is a legitimate approach. I would not have described the Glee product as a product made exactly to these designs. As Mr Campbell submitted, the definitions are not to set up a form of words but to identify what aspects of the shape and configuration of the product are relied on. However I am sure the Glee product is made substantially to those designs, that is to say aspects: (b); (b) plus (c); and (b), (c) plus (d). The way in which the Glee realises these aspects is a bit different from the corresponding version in the Azora but in each case it is substantially the same.
116. Turning to aspect (a), the design as a whole, Mr Samwell defined the design features of the Mira Azora as a whole as "rectangular, solid looking, sharp edged and box like with a pronounced, sharp edged face plate, a groove around the periphery of the casing to emphasise the face plate, decorative fasteners in the corners of the face plate and circular controls standing proud of the face plate". I do not agree with this definition. For one thing it makes no mention of the flat front face. Whether, as Mr Campbell submitted, it was calculated to make the defendant's non-infringement points does not matter.
117. The problems with verbal formulae in design cases are just as acute with unregistered designs as with registered designs. Nonetheless I should attempt to describe the design of the shape and configuration of the Mira Azora as a whole. The design is a rectangular unit composed of flat faces and straight edges. It has a pronounced flat front face with edges which extend beyond the perimeter of a functional rear unit. The front face has an appreciable thickness and there is a recess roughly in proportion to the thickness of the front face. The edges are fairly sharp but I would not call their sharpness "pronounced". The four pips exist but, in terms of shape and configuration, they are not prominent since the contrast between transparent glass and chrome plated pips is irrelevant for UK UDR. The control knobs and power button are aligned and located as described in aspects (c) and (d). The two control knobs are identical to each other. They are cylindrical.
118. I have mentioned the differences and similarities between the Bristan products and the Mira Azora product at the outset of the infringement section. From the point of view of infringement of aspect (a), the important differences between the Glee and the Azora are the following:

i) The dimensions are clearly not the same. By closing there was no suggestion that any dimensions of the Bristan products were derived from Mira.

ii) The front face of the Glee is much thinner relative to the overall size and shape of the unit than the face of the Azora. There was a suggestion that the front face of the Glee has a slight bowing. Assuming it is exists, it is barely perceptible.

iii) There is no recess in the Glee product.

iv) The Glee control knobs are made of discs flush with the face with bar handles whereas the Azora has cylinders. The Glee power button has no collar.

v) The rear unit of the Glee product, with its various functional aspects, is quite different from the rear unit of the Azora.

119. Plainly the Glee has not been made exactly to the Azora design but is it a product made substantially to that design? This is a case near the borderline. The differences cannot be dismissed as merely trivial. However looking overall, I think what makes the Azora design as a whole original and not commonplace are the elements which have been reproduced in the Glee product. Not without some hesitation on my part, I find that the Glee product is made substantially to the Azora design as a whole.
120. As for the other two Bristan products, Joy stands or falls entirely with Glee. Smile has no power button. This makes no difference to aspects (b) and (c) and so it infringes aspects (b) and (b) plus (c). Without a power button the Smile cannot infringe aspect (d). The case over combinations including (d) cannot make any difference. The lack of a power button takes the Smile one step even further from the design as a whole however it seems to me that if the Glee infringes aspect (a) then so too will the Smile.

Conclusion

121. I have asked myself whether the difference in the conclusions I have reached between registered and unregistered designs in this case indicates an inconsistency. I do not believe it does. The significance of glass in RCD 0002 is an irrelevance as far as unregistered design right is concerned while the lack of the knobs as a feature of RCD 0001 makes that very different from UDR aspects (a), (c) and (d). The closest the two cases come is between RCD 0001 and aspect (b) alone since each relates more or less to the flat rectangular front and has no reference to knobs but even here the arguments are not the same. The pips are more important in the RCD than the UDR and aspect (b) itself has been defined so as to avoid or at least significantly downplay the significance of the recess and the pips, which are features of RCD 0001.
122. I find that Registered Community Designs Nos. 000578463-0001 and 000578463-0002 are not infringed by any of the Bristan Glee, Joy or Smile products.
123. I find that the Bristan Glee, Joy and Smile products infringe Mira's UK unregistered design right. In terms of the defined aspects: the Glee and Joy infringe aspects (a), (b), (b) plus (c), and (b) plus (c) plus (d); the Smile infringes aspects (a), (b), and (b) plus (c).
Annexes Annex A Community Registered Design No. 000578463-0001
Annex B Community Registered Design No 000578463-0002:
Annex C Mira Azora Mira Alero White Mira Alero black Mira Galena Annex D, E and F Annex G - PRIOR ART

Against both RCDs the prior art relied on is:

(i) Bathroom cabinet item 14 in the Argos Spring/Summer 2005 catalogue

This cabinet is shown in a single view in the catalogue. It is called "Frosted layer mirror". The descriptive text reads "Rectangular mirror with frosted frame. Sits on a glass panel so it appears to 'float' from the wall." The object consists of a mirror held proud of a thin rear flat surface on a wall. The rear flat part has a perimeter which extends beyond the perimeter of the mirror. Behind the mirror must be the cabinet part and it is recessed so that the mirror appears to float. In proportion, as compared to the RCDs, this object is thinner against the wall. The mirror has four large circular pips. They are located in the frosted border on the front face. The mirrored part is inside the pips. Horizontally the frosted border accounts for just under a quarter of the width.

(ii) UK registered design 2060740 Horne

This design was registered in 2001. It is a picture frame:



(iii) RCD 515804-0003 (Massive) registered in April 2006. The indication of product is "luminaires":



(iv) RCD 437090-0024 (Massive) published in January 2006. The indication of product is "luminaires":



(v) RCD 165790-0018 (Trilux-Lenze) published in 2004. The indication of product is "built-in lighting":



Against RCD 0001 only:

(vi) The HiB Denia bathroom cabinet.

This cabinet is shown in catalogue in a single view only. It appears to be a simple blank rectangular cabinet in portrait orientation with a flat blank rectangular front door. The outer edge of the door extends beyond the outer edge of the rear cabinet. It does not appear to have a recess. Mr Ginsberg gave evidence it was launched in 2005.

(vii) The Sirrus Nimbus Electratherm shower unit

Mr Gibbs' evidence was that it was on sale for several years from 2000. It looked like this:



(viii) UK registered design 2093843 (Matsushita) registered 2000 for an electric water heater:



(ix) Mira Sport

The design of the Mira Sport varied over time and a number were in evidence. This is the 1998 version.


Annex H Triton T80si