Raise A Glass To Design Law: The Utopia Case

Design law is often viewed as the poor relation of other forms of intellectual property rights such as patents or trade marks. However, the importance of design protection in appropriate cases should not be underestimated.

The case of Utopia Tableware v BBP Marketing & Ors [2013] EWHC 3483 (IPEC) case demonstrates how even a relatively simple design for something that at first sight might be thought to be a straightforward product can be protectable.

Utopia was a case about a design for a beer glass. The proceedings were started in December 2012 when the claimant sought an interim injunction against the defendants to stop them from selling a rival beer glass design. The claimants relied on allegations of UK unregistered design infringement and also infringement of a registered Community design. They also relied on passing off. The injunction was granted after the judge was satisfied that the claimant's evidence demonstrated that it had a good case and would suffer irreparable damage if sales were not stopped. However, the case took an extraordinary turn of events when it subsequently transpired that the claimant had falsified some of its key evidence to the court when seeking the injunction.

In May 2013, after a further hearing, the court agreed to refer the matter to the Attorney General on the question of whether the conspiracy to fabricate evidence should be the subject of proceedings for contempt of court.

Meantime, notwithstanding its conduct in relation to the interim injunction, the claimant was allowed to bring the design infringement allegations to trial.

UK unregistered design

Dealing firstly with the allegations of UK unregistered design infringement, the court held that the claimant's design for its ASPIRE beer glass was original and that whilst some of the design features claimed for the design were "commonplace" in the relevant design field at the time the design was created, the principal design feature was protected by UK unregistered design. The defendants had admitted to copying the claimant's design so copying was not in issue.

In view of these findings it was inevitable that...