Registered Designs: Mainetti (UK) Ltd v Hangerlogic UK Limited

Two actions came before before Mr. Recorder Purvis in Mainetti (UK) Ltd v Hangerlogic UK Limited [2012] EWPCC 42:

• a claim by Mainetti (UK) Limited ("Mainetti") that Hangerlogic UK Limited ("Hangerlogic") had infringed its three registered designs for various clothes hangers and a counterclaim by Hangerlogic for the revocation of those design registrations: and
• a. claim by Hangerlogic for a declaration that a modified range of garment hangers did not infringe Mainetti's registered designs and a counterclaim by Mainetti for infringement.of those registered designs.

The recorder found for Mainetti in both sets of proceedings.

The Registered Designs

Mainetti's design registrations were as follows:

• Design number 2080944 for a garment hanger registered as of 5 Feb 1999: a 'clip hanger' used to suspend trousers, shorts and skirts from two clips ("the clip design");
• Design number 2060713 for a garment hanger registered as of 7 Nov 1996: a hanger used for jackets ("the jacket design"); and 
• Design Number 2053286 for a garment hanger registered as of 11 Jan 1996: a hanger used for shirts, T-shirts, blouses and dresses ("the tops design").

Hangerlogic's Products
Mainetti produced the following overlays of the registered designs and Hangerlogic's products::

 Clip design

Jacket design

Tops design

Validity
Hangerlogic attacked Maintetti's registrations on the ground that the designs were not new.

All the designs were registered before 9 Dec 2001 when The Registered Designs Regulations 2001 came into effect. Those regulations implemented the European Designs Directive (Directive 98/71/EC of the European Parliament and of the Council of 13 October 1998 on the legal protection of designs OJ L 289 , 28/10/1998 P. 0028 - 0035) ("the directive") by amending the Registered Designs Act 1949. Reg 12 (2) of the 2001 regulations provides:

"The Act of 1949 as it has effect immediately before the coming into force of these Regulations shall continue to apply in relation to registrations to which this Regulation applies (“post-1989 registrations”) so far as the Act relates to the cancellation or invalidation of such registrations (other than cancellation by virtue of section 11(3) of that Act and by reference to an expiry of copyright occurring on or after the coming into force of these Regulations)."

In other words the validity of a registration is determined in accordance with the Registered Designs Act 1949 as it stood before it was amended.

S.1 (4) of the formerly Act provided:

"A design shall not be regarded as new for the purposes of this Act if it is the same as a design –
(a)    registered in respect of the same or any other article in pursuance of a prior application, or
(b) published in the United Kingdom in respect of the same or any other article before the date of the application
or if it differs from such a design only in immaterial details or in features which are variants commonly used in the trade."

At paragraph [16] Mr. Recorder Purvis directed himself that the question that he had to decide was whether the registered designs differed only in immaterial details or variants commonly used in the trade from the prior art and that those were distinct questions.   It seemed to him that the only sensible way of applying that test was

1. To identify the differences between the designs; 
2. To consider whether the differences are immaterial (as opposed to 'substantial' – see Whitford J in Valor Heating Co. Ltd. v. Main Gas Appliances Ltd [1973] RPC 871 at 878-9); and
3. If the differences wre not immaterial, to ask whether they simply consist of variants commonly used in the trade. 

He added that "in making the assessment of materiality of differences, the designs must be looked at as a whole, both on the basis of a side-by-side comparison and 'also on the basis of having had a look at the registered design, then having gone away and come back and perhaps been put in a position of deciding whether some other article is the one you originally saw.'(Valor at 878)."

Hangerlogic cited no less than 13 prior art designs: 5 each for the clip and tops designs and 3 for the jacket. That seems to have irritated the judge.  He said at paragraph [17]:

"It is unclear why so many were cited. It should have been clear to Hangerlogic which was their best case on validity on each design. There is no need to burden a case like this (particularly in the Patents County Court) with an unnecessary proliferation of citations."

In paragraphs [18] to [21] he considered the invalidity case in relation to each registered design and concluded that none of those designs was invalid.

Infringement

Art 9 of the directive provides:

"Scope of protection
1. The scope of the protection conferred by a design right shall include any design which does not produce on the informed user a different overall impression.
2. In assessing the scope of protection, the degree of freedom of the designer in developing his design shall be taken into consideration."

The judge directed himself at paragraph [22] that "the test is whether the designs alleged to infringe give the same overall impression, seen through the eyes of a notional 'informed observer'." He summarized the principles on the application of the test as follows:

"(a) The comparison to be made is a visual one between the alleged infringement and the design as it appears on the Register. It may be useful to compare the alleged infringement with an actual product made in accordance with the registered design (being careful to make sure that it is in all respects the same). See Pepsico v Grupo Promer (C-281/10P).
(b) The comparison is to be made through the eyes of the 'informed user'. Such a person is particularly observant, has a general knowledge of the features which are normal in the existing art, but does not have the extent of knowledge of a designer or technical expert. See Shenzen v OHIM (T-153/08).
(c) The scope of protection to be given will vary according to the degree of design freedom enjoyed by the designer in developing his/her design. See Article 9(2) of the Designs Directive. Design freedom may be restricted by technical considerations, functional considerations and (to some extent) economic considerations (General Court in Grupo Promer [2010] ECDR 7 and Arnold J in Dyson v Vax [2010] FSR 39). Thus the common presence of a feature which is required for a technical reason will not be significant in itself. However, commonality in the way that feature is executed may well be significant.
(d) The overall impression test depends also on the 'existing design corpus' (see Recital 14 to the Directive). As put by the General Court in Grupo Promer, this means that the informed user would'automatically disregard elements that are totally banal and common to all examples of the type of product in issue and will concentrate on features which are arbitrary or different from the norm.' HHJ Birss in Samsung v Apple [2012] EWHC 1882 pointed out that there is a spectrum of banality from features which are ubiquitous through features which are occasionally found in the art to features which are entirely unique. The significance of any feature which is common to the registered design and the alleged infringement will depend on its position in this spectrum.
(e) The comparison involves attention to detail but not 'minute scrutiny' (Apple v Samsung at para 58).
(f) Whether or not the design was copied by the alleged infringer is irrelevant.
(g) Although it is necessary to consider the significance of individual features of the design, one must beware approaching the design as if it were a patent claim consisting of a list of features. The problem with that approach is that it turns into a debate about the level of generality at which the features should be described. See Dyson v Vax [2012] FSR 4 at 30. Ultimately, an overall visual comparison has to be made."

Applying those principles, Mr. Recorder Purvis found plenty of scope for design freedom within the basic parameters imposed by the function such as the need for a hook to fit a hanging rail positioned in the middle of the hanger, arms which are roughly the size and shape of the shoulders of a garment and so on.  He was provided with a book entitled 'Cintres Hangers' by Daniel Rozensztroch which contained photographs of hundreds of different hangers demonstrating the wide scope for the creativity of the designer that exists in the world of hangers, even extending to the world of 'disposable' plastic hangers.  

As for the design corpus the judge relied on the citations and Rozensztroch's book and concluded at paragraph [27]:

"My overall impression in terms of each design at its date of application is that it did not represent a startling and radical new departure from the norm. None of the general features found in the designs can be said to be strikingly unique in and of themselves. However, both the specific execution of those features and the way they are combined are in each case original in the sense of conveying a particular overall impression which is distinct and recognisable. An informed observer would have had no difficulty in recognising that originality."

As the real users of these products are retailers, the parties agreed that the informed user is someone in the position of a buyer responsible for purchasing hangers for a retail store (or group of stores). Such a buyer would be sensitive to design differences and very discerning when it comes to the appearance of a hanger.  One factor that influenced the recorder particularly was that the Hangerlogic designs are interchangeable with the equivalent Mainetti designs.  If the educated eye of a retail buyer considers that two hangers can be used interchangeably,the judge reasoned that this was relevant to the question of whether the designs create the same impression.  After carrying out the exercise mentioned above, he concluded that all three designs infringed.

The Modified Range

His Honour did not consider that  the changes made to the modified hangers had created a design which gave a different overall impression and concluded that those hangers also infringed.

Further Information

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