Designs: similarities do not always mean copying

The UK's law on designs is a mess, with five different regimes (including a small residue of copyright) all having a go at much the same subject matter. Albert Packaging Ltd & Ors v Nampak Cartons & Healthcare Ltd [2011] EWPCC 15 (02 June 2011) is a case on unregistered design right, or UDR, or more correctly UK UDR to distinguish it from the rather different Community right of the same name. Section 213 of the Copyright, Designs and Patents Act 1988 provides that UDR may subsist in “the design of any aspect of the shape or configuration (whether internal or external) of the whole or part of an article”. The design has to be original, but that's another part of the story.

In 2005 the claimants designed a new sort of package for wraps - the foodstuff, that is, which can be found alongside sandwiches and things in supermarket chiller cabinets and the like, stuffed with the sort of fillings that people commonly want in their lunches. Roasted vegetables and hummus. They supplied them to Sainsbury's, who later switched to buying their wrap wrappings from the defendants. The claimants said that the defendants were infringing, while the defendants not only denied that but also challenged the subsistence of UDR. Matters were complicated by the fact that  the formalities needed to create an exclusive licence so as to give the licensee standing to sue had not been complied with, and HH Judge Birss considered that compliance with these formalities (a written licence) was essential, unlike the trade mark situation mentioned in my posting a few minutes ago - so the "Ors" (Adrian and Jeremy Weintroub) could sue but apparently not Albert, which doesn't alter the finding about infringement.

The claimants characterised their design in three ways, all of which had to be assessed for subsistence of UDR:

1. The shape of the carton in assembled form;
2. A generally rectangular box save in that the top face slopes downwardly from the rear face to the front face, there being a window extending from the sloped top face onto the front face;
3. The distance from the shoulder of the pack to the top of the back panel, along the back panel, is 35mm regardless of the length or width or depth of the pack.

The first problem for the claimants was to overcome objections that what they had was a method or principle of construction - in which there can be no UDR. The judge followed the reasoning of Mann J in Rolawn Ltd v Turfmech Machinery [2008] EWHC 989 (Pat) and the Court of Appeal in Landor & Hawa International Ltd v Azure Designs Ltd [2007] FSR 9:  “[t]his exclusion operates to limit the level of generality at which a definition of the design to be relied on can be stated: the more abstract the definition relied on, the more likely it is to fall foul of the exclusion”. The second and third characterisations of the design fell foul of this exclusion.

The there was the question whether the designs were commonplace (in which case they would not be original and therefore there would be no UDR). The judge thought not: the evidence showed that there was no such thing as a wrap box designer - the design field was cartons. But approaches 2 and 3 were at too high a level of generality, and if UDR existed at such a high level other designers would be unable to design cartons. The first approach aw another matter altogether - the design expressed that way was by no means commonplace.

So there was at least some UDR to argue about. That looks to me like an excellent expression of the carton-designer's skill - making packaging that can magically assume the required shape strikes me as very clever. Although I can't help feeling that the world was a better place before packaging became ubiquitous ...

Infringement, of course, requires copying, and the judge explained how he thought he had to go about working out whether this was present:

[39] … the approach I will take to infringement is as follows. First I will consider whether the similarities between the Nampak product complained of and the Albert Packaging 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 Nampak put forward. In the end I will compare the Nampak product and the design objectively, reminding myself that for infringement, the relevant article must be produced exactly or substantially to the design.

It was clear to him why there was a complaint. there had been an opportunity to copy (all you had to do was go to the chiller cabinet in your local Sainsbury's) and the cartons were clearly very similar, although not identical. But the defendants' design's origins lay in a document that predated the claimants', so notwithstanding that the claimants' design had influenced the defendants' product such that it was not independently designed - but (a nice nuance) that did not mean it infringed. By section 226 infringement comprises (inter alia) “copying the design so as to produce articles exactly or substantially to that design”. None of the defendants' products were made exactly or substantially to the claimants' design, so there was no infringement. What similarities there were derived from the earlier design, not from the claimants'.

Which all goes to show how difficult it can be to work out when an infringement of UK UDR