Albert Packaging & Others v Nampak Cartons & Healthcare  EWPCC 15
Journal of Intellectual Property Law & Practice (2011) doi: 10.1093/jiplp/jpr145, first published online: August 25, 2011
The Patents County Court for England and Wales, demonstrating just how inaccurate its name really is, provides clear discussion of various aspects of unregistered design right protection under the Copyright, Designs and Patents Act 1988.
The unregistered designs system in the UK is a relatively under-appreciated part of the weave that makes up the domestic IP regime. Residing in Part III of the Copyright, Designs and Patents Act 1988 (the Act), the unregistered design right (UDR) occupies the hole dug by section 51 (which renders copyright in designs (etc) for anything other than an artistic work unenforceable against articles made to the design). The plug formed by the UDR finds basis in section 213 of the Act. This states that the right may subsist in ‘the design of any aspect of the shape or configuration (whether internal or external) of the whole or part of an article’, subject, that is, to a number of other requirements and exclusions. The extent of some of these gatekeepers of subsistence, and the manner of approaching questions of infringement of the UDR, is explored in detail in the Nampak decision.
Section 213 of the Act, as noted, provides protection for the design of the shape or configuration of ‘articles’. The ‘article’ in this case was a packaging carton for a tortilla-style wrap.
The carton was designed by Adrian and Jeremy Weintroub, the sole shareholders of Albert Packaging Ltd, in 2005. As the Judge explained (at  of his judgment), ‘the carton has a rectangular base and vertical flat sides. The front consists of a vertical panel and then an angled panel sloping backwards to meet the rear panel at an angle. In the middle of the front, straddling the vertical panel and the sloping panel, is a transparent window’. A plan view is below. It was manufactured and supplied to Sainsbury between 2006 and 2008. However, at some point in 2008, Sainsbury moved supplier to the defendant (Nampak).
The claimants alleged that Nampak's product was an infringing copy of their design. Nampak, for their part, denied this and also challenged subsistence of the UDR, arguing that the Weintroubs' design was excluded from protection under section 213(3) and was also commonplace in the design field in question.
Section 213 of the Act allows for UDR to be claimed in ‘any aspect of the shape or configuration … of the whole or part of an article’ (emphasis supplied). As Judge Birss noted, this facet of the system was ‘why the pleadings in design right cases take on such importance’. Accordingly, the claimants had defined the design in which they claimed UDR in three ways:
- ‘The shape of the carton in assembled form;’
- ‘A generally rectangular box save in that the top face slopes downwardly from the rear face to the front face, there being a window extending from the sloped top face onto the front face;’ and
- ‘The distance from the shoulder of the pack to the top of the back panel, along the back panel, is 35 mm regardless of the length or width or depth of the pack.’
The defendant argued that the asserted designs were barred from protection by section 213(3)(a) of the Act: the exclusion for methods or principles of construction. The judge adopted the established approach (see, eg Landor & Hawa International Ltd v Azure Designs Ltd  FSR 9) explaining (at ) that ‘[t]his exclusion operates to limit the level of generality at which a definition of the design to be relied on can be stated: the more abstract the definition relied on, the more likely it is to fall foul of the exclusion’.
Turning to the claimants' pleaded designs, the judge explained that the third in the above list was plainly excluded under this provision:
 … To give the claimants a monopoly in a single dimension … regardless of the length depth or width of the pack and regardless of the presence or shape of a window is too general. … [It] is a concept which allows for all kinds of appearances to be made within it … [which] produce very different appearances from each other and from the existing Albert Packaging product. Thus approach (3) is excluded by s213(a).The claimants' second embodiment fared no better. Despite its being narrower in scope, the judge still considered that it was ‘nothing more than a definition of concept rather than a definition of a design with a specific, individual appearance’. Accepting this as a legitimate subject for UDR would have given the claimants a ‘monopoly akin to a patent monopoly (albeit limited to cases of copying) in any pack which satisfied that definition’. This was plainly not acceptable. Accordingly, it was also excluded under the provision.
The defendant had also challenged the designs on grounds that they were commonplace in the design field in question—thereby contravening section 213(4). The judge first addressed the design field: was it limited to boxes for wraps?
He thought not. ‘[W]hat matters are the sort of designs with which a notional designer of the article concerned would be familiar.’ There being ‘no such thing as a wrap box designer’, the designer of a carton for a wrap would be drawn from carton manufacture in general and would set their sights accordingly.
With this in mind, the judge explained that the claimants' second and third designs were clearly commonplace—these aspects of shape and configuration were expressed at a level of generality that was widely used in the field of carton design as a whole. This conclusion was reinforced when other, unconnected, designs in the field were examined: ‘[D]esigners working independently have used the same basic elements and have mixed and matched them as they see fit.’
However, the first-pleaded design—‘The shape of the carton in assembled form’—was ‘a different matter’. To declare this commonplace would ‘deny packaging designers any design right at all’, and would completely fail to recognize the skill they employ in their work. Accordingly, UDR subsisted in the particular combination of elements making up the design of the entire carton.
But was it infringed? Judge Birss considered that the correct approach to infringement under section 226 was essentially two-pronged. First, consider whether the ‘similarities between the Nampak product complained of and the Albert Packaging design (as well as the possibility of access) call for an explanation’. In other words: could an inference of copying be made? If so, this called for an objective comparison of the design in order to see if the defendant's article had been produced exactly or substantially to it. The judge also explained that functional features of the cartons could conceivably be similar because they were performing their function and not because of copying.
On the facts, the judge stated it to be ‘clear why a complaint was raised in these circumstances’—the opportunity to copy evidently existed and the cartons, in broad terms, were ‘clearly very similar’, albeit not identical. Moreover, the similarities could not be explained away as products of function. This plainly required explanation.
The explanation provided was that the defendant's design derived from documents created in 2005, ie the year before the claimants' design went to market. Despite their authenticity being challenged, the judge considered these documents genuine and accordingly there could be no question of copying in relation to them. The standout feature of the defendant's most recent design (created in 2009), which was shared by that of the claimants, was the sloping top face with the window partly on the slope and extending onto the front. However, rather than being a result of copying, the court considered that the defendant's article looked like this because it was based on their own, independently created, 2005 design. Accordingly, the only aspect of any article that was derived from the claimants was the specific shape of the side panel. Looked at as a whole, this did not amount to infringement: the defendant had not produced an article substantially to the claimants' design.
If nothing more, this decision serves to highlight the importance of maintaining a paper trail of design development documents. Were it not for the authenticity of Nampak's 2005 designs, the outcome could have been very different indeed. The case also demonstrates the fundamental weakness (from a claimant's point of view) of the UDR system—the need to prove derivation. Especially in the field of functional designs, the area that the UDR was arguably created to cater for, the fact that similarities could just as easily be products of function as of copying provides a significant chink in the protection offered. This said, stronger monopoly rights are correctly reserved for systems of registration—an avenue that may, in retrospect, have been worth the Weintroub brothers pursuing when they created their carton in 2005