Infringement – Claimant company alleging defendant company’s products infringing registered designs

Mainetti (UK) Ltd v Hangerlogic UK Ltd: Patents County Court (Recorder Purvis QC): 24 October 2012

The claimant company held registered designs for three garment hangers. The first (No 2 080 944) was a clip hanger, the second (No 2 060 713) was for hanging jackets and the third (No 2 053 286) was for a variety of garments. The defendant company produced three products that were alleged to infringe the claimant’s registered designs. The first action concerned the claimant's proceedings against the defendant for infringement of its registered designs.

The defendant denied the infringement and counterclaimed for revocation of all three registered designs in the light of numerous pieces of prior art. The defendants subsequently made some changes to the design of the allegedly infringing hangers. In the second action, the defendant sought a declaration that each of the redesigns did not infringe. The claimant counterclaimed for infringement by the redesigns.

It fell to be determined: (i) whether the registered designs were invalid; and (ii) whether the defendant’s products had infringed the claimant’s registered design.

The court ruled: (1) The only sensible way of applying the test of whether the registered designs differed from the prior art only in immaterial details or variants commonly used in the trade was: (i) to identify the differences between the designs; (ii) to consider whether the differences were immaterial (as opposed to ‘substantial’); and (iii) if the differences were not immaterial, to ask whether they simply consisted of variants commonly used in the trade (see [16] of the judgment).

In the circumstances, none of the three registered designs were invalid in the light of each piece of prior art which had been cited against that design (see [18] of the judgment). Valor Heating Co Ltd v Main Gas Appliances Ltd [1973] RPC 871 applied.

(2) The test of infringement of registered designs was whether the designs alleged to infringe gave the same overall impression, seen through the eyes of a notional ‘informed observer’ (see [22] of the judgment). In the instant case, all of the defendant’s hangers in issue in the two actions were infringements of the claimant’s registered designs. That was because they gave the same overall impression despite slight variations (see [36], [38], [39], [42], [44], [45] of the judgment).

Henry Ward (instructed by Eversheds LLP) for the claimant; Michael Hicks (instructed by Anthony Collins Solicitors LLP) for the defendant.