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	England and Wales Court of Appeal (Civil Division) Decisions
You are here: BAILII >> Databases >> England and Wales Court of Appeal (Civil Division) Decisions >> Thermos Ltd v Aladdin Sales & Marketing Ltd [2001] EWCA Civ 667 (10 May 2001) URL: http://www.bailii.org/ew/cases/EWCA/Civ/2001/667.html Cite as: [2001] EWCA Civ 667, (2001) 24(8) IPD 24049, [2002] FSR 11

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IN THE SUPREME COURT OF JUDICATURE
COURT OF APPEAL (CIVIL DIVISION)
ON APPEAL FROM CHANCERY DIVISION
MR JUSTICE JACOB

		Royal Courts of Justice Strand, London, WC2A 2LL Thursday 10th May 2001

LORD JUSTICE ALDOUS:

1. On 26th October 1999, Jacob J gave judgment in an action brought by Thermos Ltd against Aladdin Sales and Marketing Ltd for infringement of registered design number 2022411. The judge held that there was no infringement, but rejected the validity attack pleaded by Aladdin. Thermos appealed but Aladdin did not. It follows that the only issue before this Court was whether there had been infringement of the registered design.
2. The registered design was registered as of 21st April 1992 in respect of a design to be applied to "a container primarily in the form of a flask". The design consisted of five drawings namely front, rear, side, plan and underneath plan views. It was accompanied by the following statement of novelty, "The novelty of the design resides in the features of shape and configuration of the article as shown in the representations."
3. Infringement is governed by section 7 of the Registered Designs Act 1949 as amended. So far as it is relevant it reads:

"7.(1) The registration of a design under this Act gives the registered proprietor the exclusive right -

(a) to make or import -

(i) for sale or hire, or

(ii) for use for the purposes of a trade or business, or

(b) to sell, hire or offer or expose for sale or hire, an article in respect of which the design is registered and to which that design or a design not substantially different from it has been applied.

(2) The right in the registered design is infringed by a person who without the licence of the registered proprietor does anything which by virtue of subsection (1) is the exclusive right of the proprietor.

…"

4. The word "design" is defined in section 1 as:

"1. - (1) In this Act `design' means features of shape, configuration, pattern or ornament applied to an article by any industrial process, being features which in the finished article appeal to and are judged by the eye, but does not include -

(a) a method or principle of construction, or

(b) features of shape or configuration of an article which -

(i) are dictated solely by the function which the article has to perform, or

(ii) are dependent upon the appearance of another article of which the article is intended by the author of the design to form an integral part.

…"

5. Aladdin never disputed that they had sold the alleged infringing flask called the "Insulator". Their case, which succeeded before the judge, was that the design of Insulator was so different to that shown in the registered design that there was no infringement. Thus the sole issue before the judge on infringement was whether the design applied to the Insulator was not "substantially different from the registered design".
6. The judge quoted this paragraph from my judgment in Gaskell & Chambers Ltd v Measure Master Ltd [1993] RPC 76 at 79 as a summary of the principles to be applied:

"The decision whether the registered design and the designs of the alleged infringements are substantially different is for the court and cannot be delegated to the opinions of the witnesses. It must be decided on a comparison of the features which appeal to, and are judged by, the eye. To do this, the court must adopt the mantle of a customer who is interested in the design of the articles in question as it is the eye of such an interested person, the interested addressee, which is relevant. To adopt that mantle it is often helpful to look at what was available before the priority date of the registered design as the eye of the interested addressee could be drawn to details if the design of the registered design only differs from the prior art by such details. However where a design differs radically from previous designs then the interested addressee's eye would be more likely to concentrate on and he would be more likely to remember the general form of the new design rather than the details."

7. I went on:

"It is settled law that the comparison must be made between the registered design and the alleged infringement side by side and also upon an assumption of "now and later", namely upon the assumption that the two designs are compared side by side and thereafter the interested addressee goes away and comes back later to the alleged infringements. It is in that way that the court can conclude which features of the design would in reality appeal to and be noticed by the eye and then decide whether the designs are or are not substantially different."

8. Both parties accepted that summary of the law to be correct. However the judge went on to make observations as to the type of prior art that the Court should consider when seeking to adopt the mantle of the interested customer. His observations do not appear to me to have formed part of the reasoning that he applied and are not relevant to this appeal. Without further argument on the point, I would not wish to express an opinion as to whether his observations were correct. I am by no means sure that they agree with the approach of this Court over the years, nor that the restriction he thought appropriate is necessary when seeking to decide the issue of infringement. Also it could introduce further controversy between parties as to what was or what was not a relevant piece of prior art to have in mind.
9. The judge accepted that the 1949 Act required a comparison between the design as shown in the representations and the alleged infringement. However he recorded that in the course of the case "by and large, everybody looked at the physical embodiment of the thermos design rather than designs representation." He went on to state that in reaching his conclusion he had checked again with the actual representations. That approach cannot be faulted, but in my view it is better in a case such as the present to use the drawings chosen by the proprietor to show his design as that ensures that the design features chosen by the draughtsman are concentrated.
10. As the judge recorded, the flask which incorporated the features of the registered design, sold under the name "Mondial", was received by the trade and public as novel and striking. Mr Pitt who had been for 20 years the national buyer in charge of household products for vacuum flasks of Macro Self-Service Wholesalers Ltd stated that there had been no new development in the glass vacuum flask market for some years prior to the introduction of the Mondial range of vacuum flasks. He remembered the Mondial as it was a quite revolutionary change in vacuum flask design. He said that the new shape of the flask and the different colours stood out. They were welcomed by the trade and he told the Court in his witness statement that he was at the time pleased that a manufacturer "was bringing out a revolutionary new design. In my opinion the appearance of a flask is a very important selling feature. Mondial looked very well designed. It was so new it could have come out of Star Wars. It looked a solid, chunky flask which could withstand a few knocks compared to the light-weight, fragile appearance of earlier flasks."
11. Mr Tomlinson, who had been an employee of Thermos between 1965 and 1998, had during that period risen from being a sales representative to the National Sales Manager. He said that the Mondial range was completely different from any other flask on the market at that time and was seen by customers as a very modern and innovatively designed flask. He recalled that buyers of all the major retailers that Thermos dealt with had had a very positive reaction to the Mondial vacuum flask range and in particular the two-cup design. Visually the Mondial two-cup design stood out from the crowd. This helped to increase the sales of the Mondial range as a whole. He believed that part of the reason for this additional business was the innovative modern-looking two-cup design.
12. Mr Campbell who appeared for Thermos criticised what the judge had said about the evidence of Mr Pitt. That criticism was of no substance. In fact the conclusion on all the evidence reached by the judge was substantially that sought by Thermos. At page 29 he said:

"The prior art does not assist in any way whatever. If anything, as Mr Campbell rightly pointed out, it goes the other way. It assists him to show that the Thermos design was indeed a strikingly novel departure from anything which had gone before. I intend to approach the case on that basis."

13. In his skeleton argument Mr Campbell drew our attention to the agreement between the parties that the evidence in the witness statements should stand as their evidence and that there should be no cross-examination. As that had been the course adopted at the trial, he submitted that this Court was in as good a position to decide whether there was infringement as the judge. Thus we should look afresh at the registered design and compare it with the alleged infringement and decide whether it was substantially different.
14. Such an approach might have been acceptable 30 years ago, but since then the function of this Court, upon an issue such as whether a design is substantially the same as another design, has been redefined. The latest exposition is contained in the speeches in the House of Lords in Designers Guild v Russell Williams Textiles Ltd [2001] FSR 113. That was a case in which the Court of Appeal had allowed an appeal because it held that there had been no infringement of copyright. In effect the Court of Appeal rejected the conclusion of the judge that the amount copied by the defendant did not amount to a substantial part of the copyright work. At page 117 Lord Bingham said:

"Secondly, the Court of Appeal approached the issue of substantiality more in the manner of a first instance court making original findings of fact than as an appellate court reviewing findings already made and in very important respects not challenged. It was not for the Court of Appeal to embark on the issue of substantiality afresh, unless the judge had misdirected himself, which in my opinion he had not."

15. Lord Hoffman said at page 122:

"The appellate function

The question of substantiality is one of mixed law and fact in the sense that it requires the judge to apply a legal standard to the facts as found. It is, as I said, one of impression in that it requires the overall evaluation of the significance of what may be a number of copied features in the plaintiff's design. I think, with respect, that the Court of Appeal oversimplified the matter when they said that they were in as good a position to decide the question as the judge. I say this for two reasons.

First, although the question did not depend upon an assessment of the credibility of witnesses, there seems to me no doubt that a judge may obtain assistance from expert evidence in identifying those features of an artistic work which enable it to produce a particular visual effect. The plaintiff's expert Mr Herbert described his expertise as "the art of visual literacy". This seems to me to be right. So I think that the judge, having heard Mr Herbert, was well placed to assess the importance of the plaintiff's designer's brush strokes, resist effect and so forth in the overall artistic work. The Court of Appeal, on the other hand, adopted a reductionist approach which ignored these elements.

Secondly, because the decision involves the application of a not altogether precise legal standard to a combination of features of varying importance, I think that this falls within the class of case in which an appellate court should not reverse the judge's decision unless he has erred in principle: see Pro Sieben Media A.G. v Carlton U.K. Television Ltd [1999] 1 WLR 605 at 612-613. I agree with Buxton LJ in Norowzian v Arks Ltd (No.2) [2000] FSR 363 at 370 when he said:

…[W]here it is not suggested that the judge has made any error of principle a party should not come to the Court of Appeal simply in the hope that the impression formed by the judges in this court, or at least by two of them, will be different from that of the trial judge.

In my opinion the judge made no error of principle. His decision that the copied features formed a substantial part of the work should therefore not have been reversed. I would allow the appeal."

16. Lord Scott said at page 135:

"However, the finding of copying was not challenged, and, in any event findings on such matters are particularly the province of the trial judge. In Biogen Inc. v Medeva Plc [1997] RPC 1 at 45, my noble and learned friend, Lord Hoffmann, commented that:

Where the application of a legal standard such as negligence or obviousness involves no question of principle but is simply a matter of degree, an appellate court should be very cautious in differing from the judge's evaluation.

The same caution should, in my view, be employed in relation to evaluations about similarities and substantiality. (See also the remarks of Buxton LJ in Norowzian v Arks Ltd (No.2) [2000] FSR 363 at 370).

For these reasons, and those given by my noble and learned friend, Lord Bingham of Cornhill, whose speech I have had the advantage of reading in draft, I would allow the appeal."

17. The crucial issue in the present case – is the design of the Insulator substantially different from the registered design? – is analogous to the question that had to be decided in the Designers Guild case. The question is one of mixed fact and law in that it requires the judge to apply a legal standard to the facts. In my view the appellate function in this case is that indicated in the Designers Guild case. Thus this Court should not reverse the decision of the judge unless he had misdirected himself or otherwise erred in principle.
18. Mr Campbell anticipated that to succeed he would have to show that the judge erred in principle. He submitted that he had done just that. First he submitted that the judge had placed an unwarranted stress upon differences of function. His second and third submissions were in my view conjoined. He submitted that the judge had paid too much attention to the detailed differences seen on a side-by-side comparison; whereas he should have paid more attention to the major design features that would be remembered.
19. For my part I do not believe that the judge erred in principle. True, the judge referred to the function of the parts and in particular to the curve on the Aladdin handle as being more suitable for use by a gloved hand. In so doing he appears to have assumed that the registered design was made according to certain proportions. However it is inevitable that when considering a flask with a handle, the features of the design are likely to be both functional and appeal to the eye. His reference to a glove must be read in context. When so read it is clear that he was explaining the difference in shape of the handle shown in the registered design to that on the Insulator.
20. I also reject Mr Campbell's submission that the judge concentrated too much on the detail and failed to consider the design after an interval of time. The judge said at page 32 of the transcript:

"I bear in mind that the test is not merely one of looking side by side. If that was the test, then very few designs would be infringed. The test is, as Mr Burkill put it, a 'now and later' test. Supposing the consumer had seen the Thermos design in a shop one week, gone away and thought about it and said, 'I want to buy one of those', and went back in a couple of weeks time. I doubt, and I am certainly not (satisfied that it would be the case) that they would say, 'Ah, that is the same design'. I think that consumers would take the view that they would like one design rather than the other because they are different designs. As I say, I think Aladdin is simply more butch. As Mr Burkill put it, if Thermos is Star Wars, Aladdin is more camping or Jurassic Park. The Aladdin is more military in look."

21. There is every reason to conclude that the judge adopted that approach. For those reasons I would dismiss this appeal, but in deference to the submissions of Mr Campbell I will set out why I would have come to the same conclusion as the judge.
22. When considering what are the features of the registered design, it is important to bear in mind that it is only the features of shape and configuration that are relevant, and that it is the instructed eye that is the judge.
23. The side, rear and front views show the flask to have a main body and a top. The main body has bands and a handle. The handle on the main body is of I-beam construction spreading out to merge with the bands. The top is made up of a cylinder split into two, with a truncated cone mounted on the top. It has adjacent cup handles looking like hoops extending sideways from the two cylindrical portions.
24. The features which I have described are, I believe, the main features of the design. But the proportions of those features in relation to each other are also important. The main body consists of about 65% of the total height. The cylindrical portion of the top is about 25% of the total height and the truncated cone about 10%. The bands shown attached to the handle give an impression of strength. The overall impression is of an elegant strength.
25. The Insulator also has a top and main body with bands and a handle. The handle on the main body is of I-beam construction. The top is made up of a cylinder split into two with handles extending sideways. There the similarities end. The shape of the handle on the main beam is different in every detail. Its vertical element is curved and it appears to have about the same width throughout. The top is very different. The cylindrical sides are about twice the height of those on the Mondial. There is no truncated cone, only a dome-shaped top. The bands around the main body are thicker. The cup handles are round, not hoops.
26. Those differences, when the registered design and the Insulator are compared side by side, are such that the two designs are not substantially the same. I come to the same decision when considering the two designs after an interval. The dimensions of the handle, the bands and the absence of a truncated cone are memorable, resulting in a different overall perception. The registered design has elegance which is lacking in the Insulator.
27. For those reasons I would dismiss this appeal.

LORD JUSTICE MUMMERY:

28. I agree.

LORD JUSTICE KAY:

29. I also agree.

ORDER: Appeal dismissed with costs summarily assessed at £20,000; permission to appeal to the House of Lords refused.

(Order does not form part of approved Judgment)