In Utopia Tableware v BBP Marketing*, the Judge held that Utopia's UK unregistered design right in the shape of the profile of the outer surfaces of its 'Aspen' beer glass design was valid and infringed by BPP's 'Aspire' beer glass. The Aspire was also found to infringe Utopia's UK registered design for the Aspen.
Utopia's main design drawing and the registered design are shown below:
The Court held that UK unregistered design right subsisted in the following features of the Aspen glass which were original and not commonplace:
- The shape of the profile of the outer surfaces of the glass, including a waisted section, an elongated tulip shaped section which tapers inwardly as it approaches the rim;
- The shape of the profile of the inner surfaces;
- The shape of the rim connecting the inner and outer surfaces; and
- The thickness of the base.
With regard to the registered design, the Court held that the informed user was a person who had knowledge of the existing design corpus, was interested in the products concerned, showed a relatively high degree of attention when using them and conducted a direct comparison of the designs in issue unless there were specific circumstances which made it impractical or uncommon to do so. He held that the informed user was unlike many beer drinkers in the real world, some of which paid little attention to the design of their glass. Finding that the registered design had the necessary individual character, the Court considered that designers of tall waisted beer glasses had only a limited degree of freedom (the glasses in question had to be tall and have a waist). Therefore, even minor differences were sufficient to confer individual character. Aspects which could be varied included the position and diameter of the waist, which were all features that the informed user would notice. Considering the overall impression created by the prior art as against the registered design, the registered design was found to have individual character.
The Court held that BPP's Aspire glass was plainly made substantially to the unregistered design right subsisting in the Aspen glass and so was infringing. Furthermore, the overall impression created by the Aspire glass was the same as the registered design and therefore also infringed the registered design. The fact that the Aspire glass was made of a different material to the Aspen glass was irrelevant since the registered design did not specify any material.
* EWHC 3483 (IPEC); 12.11.13