Colour Makes a Comeback: The Curious Case of Ms Block

The United Kingdom has had since 1989, an intellectual property right known as “unregistered design right” (UDR), which arises automatically upon the creation of an original design. Closely related to copyright, the right relates to the design of any aspect of the shape or configuration, whether internal or external, of the whole or part of an article. Certain parts of an article do not give rise to design right, and in particular any features of shape or configuration which allow the article to fit up against another article so that either article may perform its function (the “must fit” exclusion), or also those features which are dependent upon the appearance of another article of which the article in question is intended by the designer to form an integral part (the “must match” exclusion). Additionally, neither “surface decoration” nor methods or principles of construction give rise to design right.

Thus, design right is principally concerned with the “shape or configuration” of articles. The concept of the “shape” of an article is relatively straightforward, relating as it does to its three-dimensional structure. Thus, for example, a tennis ball is of a spherical shape, whereas dice are generally cubes. The idea of “shape” is an everyday concept with which most people are familiar.

The idea of “configuration” of an article, however, is both legally and linguistically less clear. For example, is “configuration” somehow different to “shape”? If it is not, then why did the legislator choose to include it? Conversely, if it is different, then what properties of an article can be said to be “configuration”?

This issue of shape vs configuration was considered recently by the Court of Appeal in Lambretta Clothing Company Limited vs Teddy Smith [2005] RPC 6. This was a case which dealt with the issue of colour as a feature of “configuration”. As it is pertinent to the present case to be discussed, a brief summary is set out next.

At the heart of the Lambretta case was a tracksuit top, the shape of which was old, but in which the designer had introduced new colours: blue for the body, red for the arms, and white for the zip. These are referred to as the “colour-ways”. The issue in Lambretta was whether the selection of colour-ways for a pre-existing design of tracksuit top could be considered to be “configuration... of an article”. After examining the use of the word “configuration” in registered designs cases and determining that it could not have a different meaning for unregistered design right, Jacob LJ went on to observe that although the colour-ways were indeed configured to produce the ultimate complete article, their colour had nothing to do with that configuration. He therefore concluded that the mere choice of colour-ways for a standard tracksuit top was not an aspect of the shape or configuration of an article or part of an article, in which design right could subsist. Following Lambretta, therefore, it seemed that the colour of an article was not something to be considered when assessing design right.

Nevertheless, it would seem apparent to many people that colour choice is an important part of the field of design, and particularly in the decorative arts, such as painting, sculpture, or jewellery making. Denying the scope of “configuration” within the context of design right from applying to colour does impact, to some degree, the availability of design right in this area. However, following a recent decision of the Patent Office in the case of Louise Block vs Bath Aqua Glass Limited, it seems that colour of an article can still be a feature in which design right can subsist, and in particular if it is the colours which help define the actual shape of the article.

The case of Louise Block vs Bath Aqua Glass Limited was unusual in another respect, because it had been started by the claimant as a litigant in person using the small claims track in the Bristol County Court. Such a choice of venue for the matter was entirely in accordance with the Civil Procedure Rules, which permits design right claims to be brought in any County Court with a Chancery Registry. However, at the Case Management Conference the Bristol County Court decided that, whilst it was competent to hear the issue of infringement of the design right, it did not feel competent to decide the issue of subsistence of design right, and hence directed the parties to refer the issue of subsistence to the Patent Office, under Section 246 of the Copyright, Designs & Patents Act 1988. Section 246 of the CDPA’88 confers on the Patent Office jurisdiction to decide both the subsistence and term of design right, on the basis of a reference made to it by the parties to a dispute. The claimant Ms Block therefore referred the matter to the Patent Office, with both the claimant and defendant being initially unrepresented. In order to aid the parties, the Patent Office arranged for professional representation in the matter. In this respect, the claimant Ms Block was represented by Withers & Rogers LLP.

In order to pursue the claim in the Patent Office, the claimant, following the decision of Mummery LJ in Farmers Build Limited vs Carier Limited [1999] RPC 461, had to submit an identification in as precise terms as possible as to what she claimed to be her original design. In this case, the claimant Ms Block claimed design right in the following terms:

"With reference to Annex 1, design right is claimed in the following particular aspects of shape or configuration of the Design, being an item of glass jewellery having:

a) a generally planar glass component that is substantially quadrilateral in shape having upper and lower major surfaces and at least a first set of opposed substantially parallel sides, the component being apportioned into at least two parts, each part:
i) having different material properties such that in the visible light spectrum each part has a different colour from its adjacent part; and
ii) is of a shape having a boundary with the or each adjoining part which is substantially straight, that segments the component substantially perpendicular to the two opposed parallel sides, and that connects said sides; and
b) an attachment means for suspending the component from a chain or the like, the attachment means being located on and extending outwardly from a side of the component other than either of the two opposed parallel sides.”
A portion of Annex 1 referred to in the claim is shown below as Figure 1.

Figure 1: Examples of the articles in issue

As will be seen, the articles in issue were items of glass jewellery which had a “stripy” effect, the stripes being of different colours, and there being usually at least two, and commonly three or more, stripes per article. The colours of the stripes, and their number could be varied, but the stripes were always horizontal with respect to the overall article, when hanging from a chain.

In order to defend Ms Block’s claim to design right, Bath Aqua Glass Limited alleged that the design was both commonplace, and that it fitted into various of the exceptions to design right, such as being a method or principle of construction, surface decoration, or fitting into the “must fit”, or “must match” exceptions. Detailed discussion of these aspects of the case is not pertinent here, suffice to say that the defendants were unable to prove that the design was commonplace, and neither did the Hearing Officer agree that the pleaded exceptions applied.

Of more general interest, however, was the Hearing Officer’s finding with respect to the Lambretta decision discussed above that in fact the use of different colours to define the design right was acceptable. The issue of Lambretta was in fact raised by the Hearing Officer at the hearing, rather than by the defendants. Nevertheless, the claimant sought to distinguish her jewellery items from Lambretta by arguing that the features of shape and configuration of the jewellery items in issue went further than just mere colour of a known article.

The Hearing Office, after considering Lambretta very carefully, came to the conclusion that the present case was distinguished from Lambretta as the jewellery forming the basis of the case did not include a “mere” choice of colour-ways. Instead, giving the word “configuration” its ordinary meaning in the context of this jewellery, the Hearing Officer decided that the juxta-position of two (or more) differently coloured transparent parts was in his view quite properly to be treated as an aspect of the configuration. Furthermore, the claim to design right did not specify any specific colours, but merely required the colours to be different. However, the Hearing Officer did note that he was reluctant to make much of this latter distinction because such a situation was not considered by the Court in Lambretta.

In conclusion, then, it seems that while the Court of Appeal held in the Lambretta case that a mere choice of colour for parts of an article of a known shape could not be said to be “configuration” sufficient enough to establish unregistered design right, following the Louise Block case it seems that where the colour of an article can be used to define the juxta-position of two or more otherwise transparent parts then it is deemed “configuration” sufficient to establish the subsistence of unregistered design right. Such a finding may not be of general application in other fields, but certainly in the glass-making field or other fields where generally transparent materials are used, then the respective colours of those materials which help to define an article’s shape and configuration are still of importance.
 
Nicholas J Wallin
October 2006
Nicholas Wallin is a partner in Withers & Rogers LLP’s London office, and represented the claimant Louise Block in the case noted above.