Registered design infringement

Facts

The Netherlands Company Koninklijke Philips Electronics N V is the registered proprietor of aesthetic design A99/0206 in respect of a steam iron.  Together with Philips S A (Pty) Ltd they brought an application against Kenwood Home Appliances (Pty) Ltd for a final interdict for infringement of their registered design, alternatively an interim interdict.  Kenwood brought a counterclaim for invalidity of the registered design.  Copies of photographs of the registered design, and the Kenwood iron and photocopies of prior art US and UK irons were annexed to the judgment.  Both the registered design and the Kenwood iron had a metal base (which contained parallel horizontal grooves) extending about three quarters of the way from the front to the back of the iron and a plastic body part which sloped upwardly in a convex manner from the front.  There was a water filling point on the top front of each iron and each iron had an elliptical opening between the top handle part and the rest of the body for a person’s hand to be inserted.  Each iron had a dial on the surface forming the lower part of the elliptical opening.  The registered design and the Kenwood iron each had a forwardly sloping back.  One of the prior art documents showed a flat back but no elliptical opening whereas the other had elliptical opening but not a flat back.  There was a distinctively shaped and coloured water tank around the elliptical opening in both the registered design and the Kenwood iron.

It was common cause that the second applicant did not have locus standi to seek relief based on the registered design and that the registered design must be new and original.  It is new if it is different from or if it does not form part of the state of the art immediately before the application for registration thereof.  Counsel agreed that the Applicant’s entitlement or otherwise to final interdict could be determined on the papers so there was no need to consider interim relief.

Held

What must be decided is whether, judged solely by the eye, the shape and/or configuration of the registered design is different from the state of the art as it appears from the cited US and UK designs.

In the registered design, the water tank formed a distinctive part of the iron.  A line traced of along the bottom from the front of the iron starts parallel to the base and then curves upwardly around a generally elliptical path until it meets the front of the iron.  The opening for the fingers of a person’s hand is elliptical with the long axis inclined upwardly from the front to the back.  The heel of the registered design is formed by a more or less straight line.

The cited US design has an opening which is markedly different from the registered design.  The differences between the registered design and the cited US design are striking and immediately apparent.  The heel of the registered design is different from that of the cited U S design.  The part between the bottom of the water tank and the sole of the registered design is visibly wider than corresponding part of the UK design.  There are material differences between the registered design and the UK design in shape and configuration.  The respondent’s defence that the registered design is liable to be revoked cannot succeed.

The court found no merit in the appellant’s witness’s reasons that all of the integers were present in the prior art documents.  Lack of novelty was therefore not found.  Regarding infringement, protection is given for a design which embodies the registered design or a design not substantially different from the registered design.  The doctrine of imperfect recollection does apply.  There is a relation between the degree of novelty of the registered design and the degree to which an alleged infringement must differ from the registered design.  Looking at the articles side by side, their shapes and configurations are so similar that one would look hard for differences.  The differences were slight, and apparent only after close inspection even when the articles are viewed side by side.  Their general shape and configuration was the same, notably the shape of a water tank and the opening within it which are striking features of both irons.  The soles of the irons are almost identical and the heels are both elevated in relation to the flat surface of the sole.  The differences pale into insignificance.  The degree of difference between the Kenwood and the registered design is much less than between the registered design and the prior art.

The Court granted the interdict with costs.

Comments

With few decided cases on infringement of registered design, it was helpful for the court to confirm that the doctrine of imperfect re-collection applies, as does the relationship between the degree of novelty and the alleged infringement.  In addition to looking at the articles side by side, an exact comparison of differences showed that these were only differences of a small degree.