Discerning the consumer's taste

Roger Pearson looks at case which raised the question of whether design should be judged through the consumer's or the trader's eyes

In a recent challenge to the validity of a registered design, before Mr Justice Laddie in the Chancery Division, cafetiere manufacturer, Bodum, sought deletion of a design registration held by Household Articles, of a product similar to one that Bodum had been producing.

Bodum failed, but Paul Stevens of West End firm Olswang, which acted for Household, says the case was unusual: "The normal course is that someone who considers their design is under threat will go to court seeking orders to ban infringement."

The defendant can then allege invalidity of the registration in addition to arguing that its product falls outside the scope of the register.

This is called the "squeeze argument". The registered proprietor has to argue that the monopoly conferred by the registration is wide enough to encompass the infringer's product but not so wide that it encompasses previous designs which would render the registration invalid.

The products involved were Household's "Rialta" coffee pots for which the design has been registered, and Bodum's "Bistro", in which no design is registered. Both are similar in principle and, Bodum argued, similar in design.

Household had made no claims that Bodum's "Bistro" infringed its design, but Bodum mounted the action to ensure that Household's registration which it considered invalid did not interfere with any future plans Bodum may have.

Mr Justice Laddie said that the two coffee pots at the centre of the case performed in the same way and that overall the common functional parts made them "look like cousins".

It had been argued that Household's product was "nothing more than an obvious and banal combination of known design features," but Judge Laddie did not agree. He said that while the design could not be classed as "radical" it was nevertheless "visually pleasing and distinctive".

He said that Bodum had failed to show that Household's product differed from its own only in immaterial details or in features which were variants commonly used in the trade. He was not persuaded the differences were so insubstantial as to render Household's design registration invalid.

Apart from these unusual circumstances, another issue emerged from the case the test to be applied when deciding on the similarity between the two products.

Should a judge, in reaching his decision on this point, view them through the eyes of a member of the public or the more discerning eyes of a business supplier of the product? Past decisions have applied the test through the eyes of the consumer. But in this case, Judge Laddie confirmed that the view of the trade is also be relevant.

The judge said: "Just as the expert may be too experienced to represent the view of the ordinary consumer, so too the court may become too experienced. Novelty of a registered design is to be assessed by the court as if through the eye of the customer for, or trader in, the relevant goods."

Stevens says: "This means that as an owner of a design registration, a litigant is able to adduce evidence of the trade view to assist the judge.

Although it is a matter of how the design strikes the judge, it is likely that the registered design proprietor will rely on the trade being more discerning than the consumer, when defending a claim of invalidity.