The Unclean Shower - Kohler Mira V Bristan

This recent Patents County Court Judgment illustrates two points very well: how the UK unregistered Design Right allows a rightsholder to decide the extent of their rights after the event and the difficulty of proving a clean, independent design process. 

Kohler Mira (“Mira”) sued Bristan for infringement of both Community Registered Designs and UK unregistered Design Rights. Although the alleged infringements had some features in common with the Community Registered Designs, there were significant differences.  Thus the alleged infringements were held to present a different overall impression and so did not infringe. However, by asserting unregistered Design Rights in just combinations of features that were in the alleged infringements and by showing similarity and opportunity to copy, Kohler Mira were able to shift the onus to prove independent design onto Bristan. Bristan’s evidence was held not sufficient to prove they did not copy.

The two Community Registered Designs (CRDs) on which Mira sued were for electric showers. They were quite radical departures from earlier designs having a rectangular transparent front plate standing proud of a box containing the working parts of the shower and centrally aligned controls. Earlier designs were mostly “dull white boxes” which were often “highly curved”.  Thus the Mira designs were regarded as “striking”, “bold” and “stylish”, with the second design in particular being said to give “a relatively wide scope of protection”.

Nevertheless, although the three alleged infringements had some features in common with the CRDs, they lacked the features that contributed most to the individual character of the CRDs and so gave a different overall impression. Thus the main part of Mira’s claim, infringement of the CRDs, failed.

For the claims of infringement of UK unregistered Design Rights, the ability to define the Design Right after seeing the infringement came to the rescue.

The UK unregistered Design Right is in some respects a form of copyright and can be asserted in the design of the shape and configuration (but not surface decoration) of the whole or part of an article. The design must be recorded in a design document but that document is not registered or itself published. Given that Design Right can subsist in the design of part of an article, a design document showing a substantial product creates a multiplicity of Design Rights in different features of the product and different combinations of features. Thus the rightsholder can select for assertion from this multiplicity of Design Rights those features and/or combinations of features which are present in an alleged infringement. This aspect of UK law is controversial and there have been calls for amendment of the relevant statute.

This flexibility of Design Right is in theory balanced by the limitation of infringement to cases of copying; a Design Right is not a monopoly right. However, by showing opportunity to copy and sufficient similarity between an alleged infringement and the design in which Design Right is asserted, the rightsholder can shift the burden of proof, that there was no copying, onto the alleged infringer.

In the present case, Mira claimed unregistered Design Rights in, amongst other things, the overall rectangular appearance and the aligned arrangement of controls; features present in the infringements. The success of Mira’s products embodying the designs gave ample opportunity for Bristan to have copied.

Not surprisingly, Bristan’s defence was that their designs were independently created and they presented evidence from Mr Helme, the main designer of their products. He was new to the industry when he designed the infringements and gave evidence that he had not at the relevant time seen the Mira products. Mr Helme was held to be a credible witness and there was no evidence to contradict his assertion that he had not seen Mira’s designs when he designed the alleged infringements. How then could copying have occurred?

The answer is that Mr Helme was not the only relevant person. Firstly, he inherited some constraints on the design, in particular relating to the placement of controls, from design work by a predecessor whose brief referred to Mira’s and other designs. Secondly, Mr Helme produced several concept designs from which others chose the designs to be developed. Those others did not give evidence and it was inferred they “must have been well aware of the Mira product”. Whilst Mr Helme was held to have been innocent of direct copying, the influence of others was held to undermine Bristan’s defence of independent design.

This case therefore shows that to establish an independent, or “clean room” design, it is not sufficient just to commission an independent designer with no knowledge of a competitor’s product. Care must also be taken to ensure that the designer’s brief and constraints do not direct the design in the direction of the competition and that those judging the designer’s output do not copy by selection.

A final point of note is that subsequent to the main judgment, Mira were refused an order for dissemination of it, i.e. an order that Bristan publish advertisements referring to the finding of infringement. This was because such advertisements would contribute to public confusion, rather than dispel it, due to the partial nature of Mira’s victory.

For any further information please contact your usual J A Kemp contact or John Leeming.

The main judgment is available via www.bailii.org/ew/cases/EWPCC/2013/2.html.

1 March 2013

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