Unlocking the secrets of unregistered designs
In a recent UK unregistered design right (UDR) decision the Intellectual Property Enterprise Court (IPEC) found UDRs in the design of a locker (and the designs in parts of the locker) had been infringed by a competitor's locker and its parts.
This is an important procedural decision as the IPEC has indicated a preference for design charts in UDR cases. It has further highlighted the importance of claiming UDR protection only in the shape, or part, of the article in question and not a patent-style configuration that claims UDR in the design at a level of abstraction higher than that exhibited in the actual article.
Facts
Action Storage Systems Limited (the claimant) manufacture and supply a range of plastic lockers under the brand name "eXtreme Locker".
The defendants began manufacturing and selling lockers under the brand name "SuperTuff"' Action Storage issued proceedings alleging that the "SuperTuff" locker infringed the UDRs in the design of the "eXtreme Locker" as a whole, and also the designs in parts of the lockers.
Images of the designs and relevant prior art can be viewed here.
Decision
His Honour Judge Hacon found that UDRs subsisted in designs (i)-(v) (below) and that these designs were infringed by the defendants' locker (individually and as a whole):
(i) The design as a whole of the "eXtreme locker";
(ii) The overall dimensions and proportions of the "eXtreme Locker";
(iii) The shape of the oval indentation;
(iv) The shape of the side panel: and
(v) The shape of the rear panel.
Reasoning
As is usual in UDR cases the defendants' defence consisted of a denial that UDRs subsisted in the designs of the "eXtreme Locker" and, that in any event, their "SuperTuff" locker did not infringe the claimant's designs.
Subsistence
The defendants argued that UDR did not subsist in Action Storage's designs on the basis that they lacked originality and were commonplace. Both these arguments failed.
The defendants argued that the "eXtreme Locker" was not original because it was designed with another locker in mind, one manufactured by Remcon. Although the IPEC accepted the contention the "eXtreme Locker" was created with another locker in mind, it did not accept that a finding of unoriginality followed; the defendants had already admitted that the majority of the claimant's designs were original and those which were not, differed enough from the Remcon locker to be found original in their own right.
The defendants' argument that the UDRs did not subsist in the "eXtreme Locker" because they were commonplace did not fare any better; the defendants failed to prove, through expert evidence, that the prior art they had cited was commonplace at the time Action Storage's designs were created.
Primary infringement
The judge found on the evidence that the defendants had copied the Action Storage's designs ((i)-(v)). In considering whether this amounted to a substantial part of the designs, he followed the principle that if copying is established it is highly likely that the infringing articles were made exactly or substantially to the protected design. Consequently, there was primary infringement of designs (i)-(v).
Secondary infringement
The defendants admitted secondary infringement following a reasonable period for investigation - found to be 21 days - after receipt of Action Storage's letter of claim.
In relation to the period before then, the defendants argued that they believed the "eXtreme Locker" to be a copy of the Remcon locker and that the design of the latter was commonplace. The judge referred to the principle that a mistaken belief that an act is not an infringing act does not serve to deprive a defendant of the requisite knowledge for secondary infringement (s.227, Copyright, Designs and Patents Act 1988 (CDPA)) provided that the defendant is aware of all the relevant facts. Applying this principle, the judge found the defendants liable for secondary infringement.
Comment: Pleading practice and charts
This decision is of seminal importance for future UDR cases as the IPEC provided valuable guidance (summarised below) relating to how the definition of UDR can affect its scope of protection, the detail required to successfully plead a commonplace defence and the emphasis placed, going forward, on the use of design charts.
1. Define the design and its parts UDR protection is claimed with precision and not in the abstract
Historically in defining the scope of their UDR claimants have adopted a broad brush approach to catch all possible infringing articles. This approach encompassed claiming UDR subsisted in the following designs:
1. The shape of the actual article;
2. Part of a shape of the article; and
3. A 'configuration' of the whole or part of an article - which usually leads to a bundle of designs being claimed including those not embodied in all or in any part of the article but which have all the relevant features. In other words, these designs exist in the abstract.
This decision makes it clear that 3 is unlikely to be protected by UDR either on the basis that the words 'any aspect of' have been deleted from the statutory definition of a 'design' (s. 213 (2), CDPA) or, as being exempt from UDR protection as it amounts to a "method or principal of construction" (s.213 (3)(a), CDPA).
2. When pleading the commonplace defence, identify the significant features which are alleged to be commonplace and identify the prior art in which those features are to be found
In this case, the defence pleaded some prior art by way of example to support the defendants' contention the design was commonplace, but did not go any further. The defendants argued it was better to broadly plead this defence and leave it to expert evidence to develop this issue.
The judge disagreed with this approach and set out the following guidance when pleading that a design is commonplace:
(i) State which features of the design are commonplace at the date of the designs' creation;
(ii) State the prior art relied on to render the design commonplace; and
(iii) State the date each cited item of prior art was made available to designers in the relevant field.
The benefit of this more detailed approach is that the parties or their experts (if expert evidence is ordered) can focus on whether the significant features of the design have been correctly identified, whether they are to be found in the cited prior art and the extent to which the cited prior art was known to designers in the relevant field at the relevant date.
The judge stated further that if there are any issues with the commonplace defence being adequately pleaded these should be raised at the case management conference.
3. Use design charts
The court indicated that the claimant should set out in the Particulars of Claim the significant features of the design or designs as it sees them and the extent to which those features are found in the defendants infringing product. A labelled diagram should be considered.
The defendant then should adopt, in its Defence, the claimant's list of significant features or propose amendments. The defendant should also admit or, deny the presence of significant features in the design of its allegedly infringing article.
The list will also aid the defendant if it wishes to run a defence of lack of originality, commonplace, or, rely on the "must fit" or "method or principal of construction" exemptions.
Finally, it does not matter if the lists are not agreed - the court can settle this having heard argument and, possibly, evidence on the point.