Unregistered design right claim against similar carton fails because design not copied

A business that could show its design for a food carton was based on its own previous designs successfully defended a claim that it had infringed the unregistered design rights in a similar carton designed by another business.

A business designed a new carton for food and sold the cartons to Buckingham Foods, which used them to package wraps to be sold in Sainsbury’s. Later, Buckingham switched suppliers, buying similar cartons from a new supplier, Nampak.

The first business claimed Nampak had infringed its unregistered design right in the cartons. To prove infringement, it had to show that:

  • an ‘aspect of the shape or configuration... of the whole or part of’ Nampak’s cartons was ‘exactly or substantially’ the same as that of its own cartons; and
  • Nampak had copied its design.

One of Nampak’s arguments was that it had designed two cartons several years earlier (that had never been launched commercially), and that the cartons it was now selling to Buckingham were based on those designs, rather than copied.

The Court considered whether:

  • Any similarities between the cartons called for an explanation, so as to raise an inference of copying.
  • Nampak could provide such an explanation.

It ruled the cartons were very similar, but that Nampak’s designer had relied on previous Nampak designs in Nampak’s system, that did the job. There had not therefore been any copying. If Nampak had not been able to produce evidence of its previous designs, the decision may have gone the other way.

The design in this case had not been registered at the Intellectual Property Office (IPO) in the UK. If you register a design it means only you (or someone you have licensed to do so) is allowed to stock, manufacture, sell, import or export products in the UK that include that design. So even if another trader has come up with the same or a similar design independently and innocently, without copying yours, you can stop them using it. Registration of its design would have enabled the business to stop Nampak from producing and selling similar cartons, even though Nampak had not copied them.

Recommendation

  • Businesses should ensure they keep a register of past designs so they can show their latest design is not copied from another if an unregistered design right claim is made against them.
  • They should consider registering their designs at the IPO.

Case ref:

Albert Packaging Limited v Nampak Cartons & Healthcare Limited, Patents County Court [2011] EWPCC 15

For further information please contact Rob Lucas at Shulmans on 0113 297 8941 or at rlucas@shulmans.co.uk.