“There is no material difference between Joy and Glee” - His Honour Judge Birss decides another design case

RCD 0002

RCD 0001

This moggy has been snuggling up with the recent decision from the Patents County Court (sitting in part as a Community Design Court) of Kohler Mira Ltd v Bristan Group Ltd.

The case concerned electric showers.  Mira (the claimant) alleged that the “Glee”, “Joy” and “Smile” products of Bristan (the defendant) [shown later] infringed two of its Registered Community Designs (RCDs) 000578463-0001 (“RCD 0001”) and 000578463-0002 (“RCD 0002”) [first image of each shown at the sides of the blog piece] in addition to UK unregistered design right (UDR) relating to Mira’s Azora product [shown later].

The IPKat had a sense of déjà vu, because a significant issue in the interpretation of the RCDs was the role of dashed lines in the representations, this also having been a point at issue in the Apple / Samsung litigation (see assorted earlier Katposts including here, here  here, here, here and here), also decided at first instance by HH Judge Birss.

In these proceedings, there were two sets of dashed lines to consider.  In the case of RCD 0002 (which was the first dealt with in the judgement), Judge Birss accepted the defendant’s argument that the dashed lines indicated that the front panel was transparent (again highly reminiscent of Apple / Samsung).  He rejected the submission of the claimant that the dashed lines show portions of the design which are not visible in that particular view.  This use of dotted (=dashed) lines for the purpose of showing invisible is specifically mentioned in the OHIM Guidelines for Examination, but was nevertheless not adopted in this case.

In the case of RCD 0001, which was dealt with second in the judgement, the equivalent dotted lines to RCD 0001 were not present, and so it was interpreted as having a front plate which was not transparent.  However, this times the knobs were shown in dashed lines.  The judgement records submission from both sides which are bewildering to this Kat, but the Judge reached what must surely be the correct decision, consistent with the other use of dotted lines mentioned in the Guidelines, namely that they indicate elements for which protection is not sought.  Therefore, as the Judge concluded, “the scope the scope of protection of RCD 0001 does not include consideration of the knobs on the front panel of a shower unit.”

The three Bristan products

Based on this construction of the two RCDs, the Judge (observing en route the point in the title, although he is referring to two of the three alleged infringements and, regrettably, not making a general metaphysical point) found the two RCDs valid but not infringed.

Another point in the judgement caused this Kat to raise his eyebrows.  The Judge quite correctly rejected the idea that he should consider the claimant’s commercial product, the Mira Azora, in determining the correct interpretation of RCD 0002.  However, surprisingly he held that, having construed RCD 0002, it was “legitimate to use the Mira Azora product as an exemplar for the design”, and he proceeded to do so.  However, this exercise does not seem to have influenced the rest of the comparison.

Mira products - the Azora is on the left

Having lost their case on the RCDs, all was by far from lost for Mira.  UK unregistered design right (UDR) saved the day, showing how effective this right can be for the proprietor, who gets to plead their case on subsistence of UDR knowing what infringement they want to catch. Mira claimed UDR in the following features of the Azora product and any combination thereof:

a) The whole of 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 at the centre of the front face and the other below it.
d) The circular power switch and associated collar which is vertically aligned and located below the two circular control knobs.

Do Kats like showers?

The Judge observed that “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”.

(d) was found to be cumulative with (c), and in the event the Judge found “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)).”

The defendant claimed that their designs were created independently (copying being an essential component of UDR infringement).  However, although he accepted that the designer who gave evidence was unaware of the Azora product, the Judge considered that others within Bristan were aware of Azora, and so he was not satisfied that the design of their products was independent.  He found that all three infringed.

Merpel doesn't really care whether the designs were copied or not, but was VERY surprised to find that Joy, Glee, and even Smiles are to be found in showers.