This is another registered design case, following hot on the heels of Judge Birss QC’s judgment, earlier this month, in Samsung Electronics v Apple Inc. In Gimex the judge found that Gimex’s Community registered design for an ‘ice bucket bag’ was valid and had been infringed. Illustrated here is Gimex’s ice bucket bag, called the “Ice Bag®”, containing an appropriate bottle being cooled by ice and water.
This is an interesting judgment, for the judge’s exposition of the law relating to registered designs. In a one-day trial of preliminary issues relating to the validity of the registered design and infringement, disclosure, witness statements and cross-examination were all confined to two matters: (i) the designer’s degree of freedom in developing the design and (ii) whether there was any market distinction between the prior art relied upon and the registered design for the Ice Bag.
The defendants contended that Gimex’s Ice Bag was not new and that it lacked individual character. The attack on the validity of Gimex’s registered design was based on a prior Gimex product called the “Transline” bag. A Transline bag was used simply to carry wine bottles. It was sold by Gimex before it started selling its Ice Bag. The judge said that there is no doubt that the Transline bag was very similar to the Ice Bag, but noted that Gimex emphasised that the functions of these two products were very different. Gimex’s case was that the Transline bag wass simply a bag for carrying bottles and that its nature was not that of an ice bucket bag.
The defendants also contended that their Chill Bag did not infringe Gimex’s registered design. They submitted that the Chill Bag created a different overall impression to that created by the Ice Bag. They also relied on the fact that the Ice Bag has a business card slot on one side of the bag, whereas the Chill Bag has a slot in its base for a coaster. The major dispute in the case was about the overall impression the design of the Ice Bag produced on the informed user. The judge summarised the question of overall impression succinctly at paragraph 35:
“The question of whether one design produces a different overall impression comes into play both in relation to validity (individual character) and infringement (scope of protection). Matters to be taken into account in assessing whether a design produces a different overall impression include: (i) the degree of freedom of the designer in developing the design (Art 6(2), Art 10(2) and Recital 14), (ii) the nature of the product to which the design is applied (Recital 14), and (iii) the industrial sector to which it belongs (Recital 14).”The dispute raised an issue of principle as to what happens when a designer has come up with a new use (use as an ice bucket bag) for an old thing (an ordinary bottle bag). The judge said there are two questions: The first is whether the fact that the Transline bag was used for a different purpose means it is not prior art? The second is can/should the intended function of the product be taken into account when considering the overall impression the design produces?
In answer to his first question, the judge said, following Green Lane v PMS International Group  EWCA 358 (the case of the spiky plastic balls designed for use in tumble driers v those designed originally for use as massage balls), that a design must be valid by comparison with any prior art, irrespective of use (paragraph 47). In the process, the judge came up with a useful term, “design awareness”. At paragraph 45 he said:
“The informed user is characterised by being a user who has knowledge of something. They are ‘informed’. I will call this knowledge the informed user’s ‘design awareness’. … Acquiring their design awareness by the experience of using the products concerned is what characterises the informed user. For the design to be validly registered it must be new and have individual character over the whole of the prior art. The comparison is always between the overall impression made on the same informed user by the registered design and by the cited prior design. Whether a particular item of cited prior art is within the informed user’s design awareness is not the issue. Irrespective of whether the cited prior art happens also to be part of the informed user’s design awareness, to be a valid design the design must have individual character taking that cited art into account.”In answer to his second question (whether the function of the new product should be taken into account when considering overall impression), Judge Birss considered the “informed user”, the informed user’s “design awareness” and whether, in identifying the product, one should look at the “indication of the product” in the registration itself. Regarding the informed user, the judge referred to Procter & Gamble v Reckitt Benckiser  ECDR 3, Dyson v Vax  FSR 4, the single judgment of the CJEU, in PepsiCo v Grupo Promer, Case C-281/10,  FSR 5 and two relevant judgments of the General Court: Grupo Promer v OHIM  ECDR 7, from which PepsiCo was an appeal, and Shenzhen Taiden v OHIM, case T-153/08, 22 June 2010, which defined the informed user as a user of the product, rather than a designer. The informed user is particularly observant and has some awareness of the state of the prior art.
Regarding the user’s design awareness, the judge said: “It is experience gained by using products of the type the design relates to that informs the user”  and “The impression arrived at must be a visual one, since ‘design’ means the appearance of an article or part of it, but it is notable that the test is not limited to the result of simply staring at the product from a distance. The overall visual impression of a product is one which is acquired through using it.”  Finally, regarding the “indication of product” in the registration, he said: “I believe the law permits the ‘indication of the product’ to be used as a convenient place to start, but the issue in fact turns on consideration of the design itself.” 
So, the answer to the second question is that the function (or nature) of the new product should be taken into account when considering overall impression, because the informed user’s “design awareness relates to and arises from use of that type of product.” (Paragraph 65). The judge found support in Recital 14 of the Community Design Regulation No. 6/2002 for his conclusion. Recital 14 reads:
“The assessment as to whether a design has individual character should be based on whether the overall impression produced on an informed user viewing the design clearly differs from that produced on him by the existing design corpus, taking into consideration the nature of the product to which the design is applied or in which it is incorporated, and in particular the industrial sector to which it belongs and the degree of freedom of the designer in developing the design.” (Joe's emphasis)
In relation to the designer’s freedom to design, the judge said that a large departure from the designs of which the informed user is aware as part of his design awareness is an indication of design freedom. Evidence of design freedom can also come from the fact that a wide variety of designs were produced after the date of the registered design. Judge Birss QC summarised his conclusions (references in square brackets are to paragraph numbers in his judgment) as follows:
(a) The relevance of the use to which a product is put, is that it plays a part in the characterisation of the informed user since they are a user of the product, but it does not constrain what prior art may or may not be citable against a design registration. 
(b) What the informed user is informed about depends upon the correct definition of the “product” with which the case is concerned. Once the product in question has been identified, the informed user can be identified. He or she is a user of those products. What makes an informed user “informed” is their possession of a design awareness informed by their experience of that use of the prior designs of those products. Questions of design freedom are considered from the point of view of the type of products this informed user uses. 
(c) Once the notional informed user is defined, the question of overall impression can be resolved. From the point of view of assessing individual character (validity), the informed user must be presented with any given item of cited prior art whether or not it is a design for the product in question. Whether the cited prior art is or is not within the user’s design awareness is not the issue. If the cited prior art is not a design for a product of the kind the informed user has gained experience using then it will not be part of their design awareness, but it still must be considered for the purposes of novelty and individual character. The design is only protected to the extent that it has novelty and individual character. In the Judge’s assessment of the Gimex claim, he found the following:-
(i) The identity of Gimex’s product is somewhat broader than an ice bucket bag. He called the products “bottle chillers” for want of a better description. 
(ii) The informed user is a user of bottle chillers, ie ice buckets, wine coolers and wine cooling sleeves, with – as Gimex’s counsel, Hugo Cuddigan submitted – a relatively high degree of attention when using the products. [84 and 85]
(iii) Looking at design freedom overall, the functional constraints are real enough in that the products have to be able to chill a bottle of wine. However, bottle chillers are products in which aesthetics are significant. They are design led products. The constraints allow for a fair degree of design freedom and the evidence shows that this freedom has been exercised by designers. The freedom is particularly important in relation to the height (of the bag) and the handles. 
(iv) The overall impression produced on an informed user by the registered design is that the design is for an ice bucket bag made of transparent, relatively flexible material. The design has a square base, its height is low enough such that a normal wine bottle will sit proud of the top of the bag and its width is wide enough to accommodate water and ice along with the wine bottle. These elements of height and width give the product an appearance reminiscent of an ice bucket when it contains a bottle of wine. The design also has pair of transparent tubular handles attached to a seamed region at the top through transparent washers and the handles are fixed in place by being tied.  This description is of a relatively striking design, quite different from the known bottle chillers the user is familiar with using from their design awareness. On the other hand the design clearly has constraints - it must be able to work as an ice bucket bag. Bearing this in mind, the important elements of overall impression are the height and the handles. On the issue of validity of the registered design, the judge found:
a. the appearance of the Gimex design as a whole is not dictated solely by function and the judge rejected the argument that the design is invalid pursuant to Art 8 of the Regulation ;
b. the allegation of lack of novelty over the prior art failed. Gimex’s Ice Bag is novel over the prior Transline bag, over other bags offered by packaging companies, mainly in Hong Kong and over the unproven prior disclosure of the Ice Bag itself. ;
c. the Gimex design has individual character over the Hong Kong bags  which look like bags simply for carrying bottles; and the overall impression on an informed user of bottle chillers created by the earlier Transline bag is different from that produced by the Ice Bag design. The scope of protection is relatively narrow, but the Ice Bag design has individual character and is valid. 
On the issue of infringement, the judge found that the Chill Bag is clearly an ice bucket bag. It is virtually identical to the registered design. The height is essentially the same and the handles are virtually identical.  The judge found that the only differences in the Chill Bag, ie the lack of a slot for a business card and the presence of a coaster slot in the base, are not significant and do not lead to a different overall impression. He concluded that, overall, the Chill Bag does not produce a different overall impression on an informed user from that created by the Ice Bag. The Chill Bag is an infringement.
As a final note, Joe gives full credit to Gimex's counsel Hugo Cuddigan (11 South Square) for his part in this case. This blogger recalls his blogging colleague Annsley Merelle Ward -- who was also involved in this action -- expressing much the same sentiments.Among the things we can take from this case are: First, if the nature or function of the new product (in question) is taken into account by the informed user when considering its overall impression and that function (or the nature of the product itself) creates a different overall impression from the prior art, the design is valid. Secondly, we have a useful new phrase in design cases: “design awareness”. Thirdly, determining where one design ends and another begins (see Katonomics 14, IPKat 24 April 2012) remains difficult, but the Gimex case will help to set the dividing line to enable design rights to work. This was a case where the registered design was found to be valid and, even though the scope of protection of the design is reletively low, the design was held to infringe. It seems that, after all, registerd design rights are not such poor relations in the family of IP rights. Ice Bags are cool. Sometimes it is good to have a cool design".