A touch of class? No, just a glass- but beer's best tasted in glass that's waisted

Beer, the IPKat notes, is a word that rhymes with "cheer" -- a seasonal concept if ever there was one -- and "beers" rhymes with "cheers!", a word frequently heard in this season of goodwill and merriment when the beer glasses are lifted.  Some beer glasses, as luck would have it, are not so much lifted as "lifted", and the case discussed below by guest blogger Darren Meale is all about a "lifted" design.  Darren (now at Simmons & Simmons: "I've moved on", he says) is, among other things, a regular contributor to the Journal of Intellectual Property Law & Practice (JIPLP).  Apart from writing this guest item, his other moment of fame came when, in L'Oréal SA v Bellure NV [2010] EWCA Civ 535, Lord Justice Jacob cited a piece he co-wrote with Joel Smith in his thunderous critique of the Court of Justice ruling.

A touch of class? No, just a glass

Aspen

This is a tale about beer, or rather beer glasses and design rights in them. Utopia Tableware v BBP Marketing Ltd [2013] EWHC 3483 is a decision of Mr Recorder Douglas Campbell sitting as an Enterprise Judge in the Intellectual Property Enterprise Court (IPEC) for England and Wales. You may have read about it here, where the IPKat blogged about an earlier decision in the case resulting from admissions by two senior executives of the claimant, Utopia, that they had fabricated evidence. It is not known whether these two alleged contemnors are now residing at Her Majesty’s pleasure [it's not known how much pleasure Her Majesty gets from the incarceration of naughty litigants in her prisons, but Merpel thinks that anything is more fun than having to stop at every tree for the sake of a bunch of Royal corgis], but the trial of the action went ahead nevertheless.

Utopia’s “Aspen” beer glass was copied by BBP. The Aspen glass was an example of a “tall, slender, waisted” [though we're talking about beer, we really do mean "waisted" and not "wasted"] glass. BBP admitted copying its outer profile exactly: the glass only differed in its internal dimensions because BBP used plastic of a different thickness to the Aspen’s glass. This case was therefore all about subsistence and so there were two main questions:

1. Did Utopia enjoy unregistered UK design right in its glass, or was the design commonplace and so not protected?

2. Did Utopia’s UK registered design for the glass have individual character?

The prior designs relied upon for both questions were those used by beer brands Peroni, Amstel and Carlsberg. Examples of the disputants' respective glasses along with these are shown above, but do please see the judgment itself for the actual designs considered by the judge.

Question 1 - unregistered UK design right

BBP

Unregistered UK design right will only subsist in relation to a design which is “original” (1) in the copyright sense of originating from the author and not being copied from another (Farmer Build Ltd v Carier Bulk Materials Ltd and others [2000] ECDR 42, [1999] RPC 461 (CA)) and (2) in that it is not “commonplace in the design field in question” (s.213(4) of the Copyright, Designs and Patents Act 1988, the CDPA).

The design field

The relevant design field was held to be the design of beer glasses. Said Utopia, it should be the design of high waisted beer glasses, which the judge rejected having taken the “reasonably broad approach” to the issue required by Lambretta Clothing v Teddy Smith (UK), noted by the IPKat here. In any event it made no difference, as all the glasses involved were high waisted.

Peroni

Subsistence

Four features of Utopia’s glass were considered. The only feature of any real significance to the case was (to paraphrase the words of Utopia and the judge), “the outer profile including an elongated tulip shaped section tapering in to the rim above a waisted section.” This was held original in both senses. While the Peroni glass was closest in its external profile, it had a narrower waist; a wider rim; a cone shape above the waist instead of a curve; and lacked the Aspen’s slight inward taper. The Amstel and Carlsberg glasses differed in greater respects. The outer profiles of the prior designs were “noticeably different” and, in the judge’s view, the Aspen’s outer profile was not commonplace.

The remaining features concerned the design’s inner profile and the thickness of the rim and base. The inner profile had not been copied and was not considered further. The rim and base thicknesses differed in only a minor way from the prior designs and, evidently considering them unremarkable, the judge held them commonplace. Unregistered UK design right was therefore held to subsist in the outer profile of Utopia’s glass – evidently the most important part of it at any rate.

Question 2 – the registered UK design

Individual character

The Aspen glass would have individual character if it produced upon the informed user an overall impression different from that of the prior designs, taking into consideration the degree of freedom of the designer.

The informed user

The informed user was held to be a user of beer glasses but not specifically a beer drinker. BBP argued for the latter, hoping to rely on a perceived lack of attention paid to the curvature of glasses by such drinkers. No, said the judge: the legal construct that was the informed user was unlike real world beer drinkers in a number of ways (presumably he’s sober, for one). He was also unconvinced that drinkers did not pay close attention to the design of their glasses; after all, brewers were investing significant time and money in developing their own unique products on the basis of the opposite assumption.

The freedom of the designer

Amstel

The greater the freedom of a designer of a design in issue, the less likely it is that small differences between it and a prior design will cause the designs to produce a different overall impression on the user (so you have to be further apart to get away with it), and vice versa. Although the design field was beer glasses, the judge found that the relevant design freedom was that afforded to a design of a tall, waisted beer glass. That was limited – it had to be tall and it had to have a waist. Accordingly, minor differences between it and prior designs might confer individual character, albeit with a consequently limited scope of protection when it came to infringement.

Overall impression

The judge held that the overall impression produced by the Aspen glass was:

“of a tall waisted glass, with a rim diameter that is wider than the base diameter, the waist being somewhere between 1/3 and 1/2 way up the glass, the side curving gently in from the base to the waist, then curving gently out again as one goes from the waist up to the rim, with the curve gradually approaching the vertical as one approaches the rim.”

Of the prior designs, the Peroni glass was closest. This produced the following overall impression (my emphasis):

“of a tall waisted glass, with a rim diameter that is wider than the base diameter, the waist being narrow and located somewhere between 1/3 and 1/2 way up the glass, the side going in fairly sharply from the base to that narrow waist, and then having a cone-shaped profile as one goes from the waist up to the rim.”

So the overall impression was different. Despite their similarities, the Peroni glass had a narrower waist and ended in a cone shape while the Aspen glass curved gently back towards the rim. In light of the limited design freedom, the informed user would notice these differences. The Aspen glass had individual character, so the registration was valid.

Infringement

There is little to say on either of the tests for infringement –- substantiality for unregistered and overall impression for registered –- given the admissions made by BBP. Infringement was found of both the rights. BBP conceded that its glass created the same overall impression as the Aspen, but “only insofar as the exterior shape thereof is concerned”, a qualifier which, the judge felt, got it nowhere.

Carlsberg

A few practice points for those still reading

• Both parties’ evidence included evidence which sought to comment on the similarities and differences between the various designs in the case. This, said the judge, was inappropriate, as those were matters of which he was obliged to form his own view. They should have been dealt with in submissions.

• Although Utopia only pleaded the combination of the four features of its glass for unregistered UK design right, the judge was prepared to proceed on the basis of just the first feature, having discounted the remaining three.

• Beer glasses in the UK traditionally fall into four categories: dimpled tankard, conical, tulip and nonic. Bottoms up!