Handed down yesterday, the latest decision from the Patents County Court (Albert Packaging & Ors v Nampak Cartons & Healthcare  EWPCC 15) deals with the thorny subject of unregistered designs. As readers will be aware, the ‘designs’ part of the Copyright, Designs and Patents Act 1988 declares, in s213, that an unregistered design right (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 'article' in this case was a packaging carton for a tortilla-style wrap.
The claimants’ (Albert Packaging & Adrian and Jeremy Weintroub – there was a slight issue over whether Albert Packaging actually had standing to bring an action for infringement of the UDR, as the formalities under s225 of the Act for the grant of an exclusive licence had not been complied with. For those interested, this issue is discussed at  and  of the judgment) case revolved around their design, in 2005, of a new kind of carton for wraps. The product was manufactured and supplied to Sainsbury between 2006 and 2008. However at some point in 2008 Sainsbury moved supplier to the defendant (Nampak).
The claimants alleged that Nampak’s product was an infringing copy of their design. Nampak, for their part, denied this and also challenged subsistence of the UDR.
The Judge laid out the relevant legal principles before taking time to explain the designs. He noted that the claimants’ design (shown to the right):
 “When folded up into a carton, the carton has a rectangular base and vertical flat sides. The front consists of a vertical panel and then an angled panel sloping backwards to meet the rear panel at an angle. In the middle of the front, straddling the vertical panel and the sloping panel, is a transparent window. The wrap starts as a single cylinder with the filling inside. An operator cuts the wrap at an angle (the angle is set by a frame) to produce two cylindrical pieces with sloping ends. The two pieces are put side by side in the carton. The cut faces of the two parts of the wrap can be seen through the window and so the customer can see the contents of the wrap.”Exercising his artistic muscles, the Judge provided his own diagram (left) of Nampak’s product, noting (at ) that “[t]hey are not to scale and the dimensions and proportions are only rough”, before explaining that:
 “Dimensions A + B determine the height of the carton, dimension C determines its depth and dimension B on its own determines the height of the front vertical panel. Dimension D is the width of the carton. The angle of the front sloping panel to the horizontal is θ. To the nearest mm (or degree), the claimants’ dimensions are A = 35mm, B = 95mm, C = 52 mm, D = 104 mm and θ = 34°.”
The Relevant Aspects of the Claimants’ Design
The judge explained (at ) that the claimants’ had defined the design in which they claim UDR in three ways:
Accordingly, each had to be assessed to see if UDR subsisted within it.
- "The shape of the carton in assembled form;"
- "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;"
- "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.”
On Methods and Principles of Construction
The first stumbling block in the path of the claimants came in the form of s213(3)(a) of the Act: the exclusion for methods or principles of construction. The Judge adopted the approach laid down by Mann J in Rolawn Ltd v Turfmech Machinery  EWHC 989 (Pat) and that of the Court of Appeal in Landor & Hawa International Ltd v Azure Designs Ltd  FSR 9, explaining (at ) that “[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”.
Turning to the aspects of shape or configuration before him, the Judge noted that the claimants’ third definition of their design (i.e. number 3 in the list above), was plainly excluded under this provision:
 “…To give the claimants a monopoly in a single dimension (A =35mm) regardless of the length depth or width of the pack and regardless of the presence or shape of a window is too general. ...[It] is a concept which allows for all kinds of appearances to be made within it ...[which] produce very different appearances from each other and from the existing Albert Packaging product. Thus approach (3) is excluded by s213(a).”Approach 2 fared no better. Even though it was “narrower in scope than approach (3)”, it was still considered to be “nothing more than a definition of concept rather than a definition of a design with a specific, individual appearance.”
 “…To accept this definition in effect would be to give the claimants a monopoly akin to a patent monopoly (albeit limited to cases of copying) in any pack which satisfied that definition. But packs which still satisfy that definition will have very different appearances – there is no restriction on the relative dimensions.”Were the Designs Commonplace?
Moving to the issue of originality, there was some issue over the relevant design field: was it limited to boxes for wraps?
The Judge thought not:
 “The Court of Appeal in Lambretta (above) made it clear that what matters are the sort of designs with which a notional designer of the article concerned would be familiar. The evidence was clear that there is no such thing as a wrap box designer. The relevant designers, …design cartons generally. …The design field in question in this case is not limited to wraps or sandwiches… [it is] simply carton design.”Within this field, approaches (2) and (3) were commonplace – these aspects of shape and configuration were expressed at a level of generality that was widely used in the field of carton design as a whole. “[D]esigners working independently have used the same basic elements and have mixed and matched them as they see fit.”
Approach 1, in contrast, was “a different matter”:
 “…To say that the particular combination of all the specific features of the Albert Packaging carton in its assembled form is commonplace would deny packaging designers any design right at all. That would fail to recognise the skill they employ in their work ...[involving] the selection of particular sloping faces at particular angles, particular windows with particular shapes, a particular kind of flap and so on. The details are adjusted in order to produce a package which will play its part in attracting a customer. In my judgment the particular combination of elements making up the design as defined in approach (1) is not commonplace.”Infringement
Having concluded that UDR subsisted in one aspect of design or configuration of the article, the Judge then continued to assess infringement. Earlier in the judgment he had explained that the correct approach to this question was to:
 “… 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.”On the facts, the Judge (at ) stated it to be “clear why a complaint was raised in these circumstances”, the opportunity to copy had evidently existed and the cartons, in broad terms, were “clearly very similar, although not identical”. This plainly required explanation.
The explanation forthcoming was that the defendant’s design derived from documents created in 2005, i.e. the year before the claimants' design went to market. Following a quite extensive investigation into the heritage of the defendant’s carton design, the Judge noted (at ) that, while the 2005 documents did provide one source of inspiration for the carton, the claimant’s design was “also another source of ideas which fed into the later carton designs and in particular into the 2009 carton design alleged to infringe.” Accordingly, it was not independently designed. However, this did not mean that it necessarily infringed, as s226 of the Act defines infringement to include “copying the design so as to produce articles exactly or substantially to that design”.
Following a comparison of cartons, the Judge concluded that none of Nampak’s products had been made “exactly” to the claimants’ design, and neither were they produced substantially thereto.
 “…The design in question is the shape of the claimant’s carton in assembled form, in other words the whole thing. …The claimants’ design by approach (1) is the combination of all the various aspects and features. What stands out and characterises the claimants’ design is the sloping top face with the window partly on the slope and extending onto the front. Although the defendant’s articles look like that, the reason is because they were based on the 2005 design. All of those similarities derive from a source independent of the claimants.”Who’d have thought a sandwich carton could cause such excitement?
Officially the Biggest Sandwich Ever here