p. 37222. Unregistered designs
- Paul TorremansPaul TorremansProfessor of Intellectual Property Law, University of Nottingham
Abstract
This chapter discusses the law on unregistered designs. The Copyright, Designs and Patents Act 1988 defines unregistered designs as the design of any aspect of the shape or configuration (whether internal or external) of the whole, or part, of an item. In order to secure protection, such a design must be original, in the sense that it should not be commonplace in the design field in question at the time of its creation. Unregistered design rights roughly offer 15 years of protection, during which the right holder has the exclusive right to reproduce the design for commercial purposes. Infringement consists in anyone making an item to the design without authorization and in the making of a design document that records the design for the purposes of enabling someone else to make items to it, again without authorization.
The UK also has a second kind of design, often called the design right. It does not involve registration and it is primarily concerned with functional designs. Historically these designs were not necessarily covered by the Registered Designs Act 1949 and hence the decision to provide a specific regime of design protection for them.
Introduction
The unregistered design right was introduced by the Copyright, Designs and Patents Act (CDPA) 1988 in an attempt to overcome various problems. Before that time, functional, non-aesthetic designs—such as those for exhaust pipes for cars—did not qualify for registered design protection and neither were they covered by a special intellectual property right. But there was an overlap with copyright, because, in the majority of cases, functional designs are laid down in drawings, plans, or blueprints that attract copyright protection. A copy of an item incorporating the design involves making a three-dimensional copy of the drawing, plan, or blueprint and infringes their copyright. This system provided indirect protection for the majority of functional designs, but it is hard to see why a certain category of designs—those that are aesthetic—deserve the creation of a special intellectual property right, while the other designs—that are purely functional in nature—should only be protected indirectly through copyright.
This argument becomes even more forceful if one considers that, in theory, all design rights—both aesthetical and functional—benefit potentially from the overlap with copyright. In practice, designs that met all of the requirements for registration were often not registered, because the non-bureaucratic and fee-free copyright system offered long-term protection. Parliament tried to remedy this by means of a series of arbitrary measures: in the Copyright Act 1956, copyright protection was denied to designs that could have been registered; in the Design Copyright Act 1968, copyright was once again permitted, but the term of copyright protection in such cases was restricted to the term of the registered design right.1
This created absurd situations such as that in Dorling v. Honnor Marine.2 This case was concerned with a sailing dinghy. The design for the dinghy met the requirements for registration, but had not been registered. Before their relationship turned sour, the defendant built the dinghies—both in complete and in kit forms—under a licence granted by the plaintiff. The case arose when the defendant went on to assign his licence to a limited company that he had formed; the company became the co-defendant in the case. Drawings of the dinghy and of all its parts existed, and, theoretically speaking, the copyright in them was infringed by making three-dimensional copies. In practice, the Copyright Act 1956 p. 373↵had removed copyright protection for designs that could have been registered, so no intellectual property right had been infringed in building the dinghies. But kits of parts were also made: the design of each of the included parts was purely functional and could not be registered. As a result, the provisions of the Copyright Act 1956 did not exclude copyright protection in the drawings for the kit parts and the production of the parts formed an indirect infringement of the copyright in the drawings by making three-dimensional copies of these two-dimensional drawings. The functional design of the parts enjoyed protection for the life of the author plus 50 years, while no protection was available for the aesthetical design of the complete dinghy.3 This discrepancy in protection for the two types of design could not be justified.
But it is not only the discrepancy that caused problems: copyright protection for functional designs also proved to be an inadequate solution. This became clear in the famous British Leyland Motor Corp. Ltd v. Armstrong Patents Co. Ltd,4 which we discussed in Chapter 20. The case most strongly indicated the need for design law reform with action needing to be undertaken on two points. First, a specific intellectual property right needed to be created for functional designs, meaning that the whole design area would be covered by two specific design rights: aesthetical designs would still be protected by the registered design right and the non-aesthetical functional designs would be covered by the new design right.
The second point that needed to be addressed was the overlap with copyright: a clear delimitation of both the copyright and the design area was required. The reform of the 1988 Act attempted to reach that conclusion and created the (unregistered) design right, which is officially called the design right—but, in order to distinguish it from the registered design and because there is no registration requirement, we will describe it as the (unregistered) design.
Subsistence of the (unregistered) design right
A design
The technical definition of a ‘design’ that was given in the original version of the CDPA 1988 was that it is ‘the design of any aspect of the shape or configuration (whether internal or external) of the whole or part of an article’.5 The Intellectual Property Act 2014 deleted the words ‘any aspect of’ from this provision. We will come back to that shortly. The concept of ‘shape’ is understood relatively easily, but that of ‘configuration’ is somewhat more vague. In relation to the former, suffice it to say that there is no reason why a simple geometric shape could not be a protectable design for an item.6 In relation to the latter, however, the Court of Appeal has indicated that ‘configuration’ refers to the relative arrangement of three-dimensional elements.7 These elements need to be configured and the mere choice of colourways of a standard track top was therefore not an aspect of the shape or configuration of an item or of a part of an item.8 The addition of the term ‘aspect’ to the notions of shape and configuration refers to something discernible or recognizable.9
p. 374↵This definition and approach means that various aspects of the shape or configuration of an item can be the subjects of different design rights, and that a design does not necessarily relate to the whole item. A design right can be asserted in only certain aspects of a larger article. It is, however, quite possible that both the individual parts and the machine as a whole come within the definition of a design.10 This was, for example, the case for a slurry machine as a whole, on the one hand, and its various components, on the other.11
The case law also offers another example in a case concerning pig fenders for use in pig arks, which provide shelter for a single sow and her piglets. A two-inch tube protected the teats of the sow; this two-inch tube was held to be an aspect of the shape or configuration of a part of the fender—that is, the tube element constituted a design.12 A clear distinction must, however, be made between the design and the item to which it is applied: the design is protected, while the item is not; the right protects the design itself and not the item on which it has been recorded or to which it has been applied.13 The right in the design is not a right in the item itself.14
Aspects of the internal shape or configuration of the whole, or part, of an item can also be taken into account. This marks a clear difference from the ‘eye appeal’ requirement for registered designs. (Unregistered) designs are intended to offer protection for functional designs; eye appeal is not required. The worth and ingenuity of such a design might be found in its detailed relative dimensions. A design might even exist (and be different and new) if the eye is not able to distinguish the shape (in relation to other designs).15 Larger, and more clearly visible, shapes are obviously also possible and remain eligible for protection.
The deletion of the words ‘any aspect of’ has provided more clarity and it has taken away the undue breadth of the design right with a multitude of designs per article. One is now in essence concerned with the shape or the configuration of the article, as these are described by (a combination of) features and these features must specifically be embodied in all or part of the claimant’s article.16 The design can no longer be described with a very high level of abstraction. Or as the court put it in DHK Retail: ‘[the amendment] no longer permits a claim to unregistered design right to extend to designs other than those specifically embodied in all or part of the claimant’s article; i.e. no more UK unregistered design rights in abstract designs […]’.17 The maximum level of abstraction is now that exhibited by the actual article (or part of the article) which embodies the design. This results from the now clear link between shape and configuration, on the one hand, and the article, on the other hand.18 The dilutive element ‘any aspect of’ no longer weakens that link. What has been dropped are disembodied features that are merely recognizable or discernible. What remains protected are concrete parts that can be identified as such. Mr Justice Carr repeated in Neptune19 the example given by Laddie J. in Ocular Sciences,20 namely that in relation to the design of a teapot the aspects of the design that are now excluded from protection could include the combination of the end portion of the spout and the top portion of the lid, as they are p. 375↵disembodied from each other and from the spout and the lid. As such they are not parts of the design.21
An original design
The design right will only subsist in designs that are original. Arguably there are two requirements for originality here. The first one is that the design is original in the copyright sense.22 This clearly means that the design should not be copied and that it should be the result of its creator’s own work. The design should be the independent work of the designer and should not be copied from previous designs. Time, labour, and skill should have been invested to such an extent that copyright protection could have been attracted.23 Recent cases argue that the new higher criterion of the author’s own intellectual creation should also apply here.24 Maybe the effect was the same all along. In terms of design the designer necessarily makes a functional or aesthetic judgement, so when time, labour, and skill have been expended the design becomes its author’s own intellectual creation.25 When examining originality, one should ask whether all of the additional features added by the designer give rise to the requisite quality of originality. One should not focus exclusively on one or more features or adopt a piecemeal approach, even if individual features will unavoidably require some attention and consideration.26 If design rights are asserted (only) in certain aspects of a larger article, the issue of originality needs to be considered separately for each aspect.27 The latter may not apply in the future as the ‘any aspect of’ element has been deleted from the definition, but a similar principle applies when an existing design is amended in a minor way. Assuming that the originality standard is reached and a new original design emerges the new originality will not extend to the whole of the amended design. One will therefore need to focus on the amended part. The amended part may be of a new original design, but not the article as a whole.28
But that is not all: s. 213(4) of the 1988 Act specifies that ‘a design is not “original” if it is commonplace in the design field in question at the time of its creation’. This can be seen as the second requirement for originality.29
The concept of ‘commonplace’
Laddie J has defined as ‘commonplace’ any design that is ‘trite, trivial, common or garden, hackneyed or of the type which would excite no particular attention in those in the relevant art’.30 For example, in a case that was concerned with designs for leather cases for individual models of mobile phones, it was held that those aspects of the design that were found in industry standard cases were commonplace;31 they were therefore excluded from the design right. It is possible, however, to arrive at a design that is not commonplace through the combination of commonplace and trite ingredients. The test applies to the design: if the design is a combination of ingredients, that combination itself must not be commonplace.32 p. 376↵It should be kept in mind, however, that no design right is conferred on the item; the right is conferred on aspects of shape of configuration of the item. One should therefore not derive any conclusion from the fact that the item itself is commonplace: its shape and configuration may still not be commonplace.33
The provision that is contained in s. 213(4) of the 1988 Act makes the originality requirement for designs clearly more stringent than that for copyright. Indeed, it introduces an objective component akin to the novelty consideration in patents.34 Some form of objective assessment is required.35 A design that is already known and is, in reality, nothing more than a copy of an existing design will not be original;36 neither will mere changes in scale produce a different or new design.37 It is submitted that the design must be innovative, although the fact that it is new does not carry with it any qualitative judgement. The design need not be as good or better than all existing designs, nor does it need to present a technical advantage. But this does not imply that one should simply use the novelty requirement as applied in patent law,38 nor is it possible to import concepts such as ‘novelty’ and ‘variants commonly used in trade’ from the law on registered designs.39 The 1988 Act itself restricts the scope of the provision to the design field in question and nothing outside that specific design field will influence the decision regarding the originality of the design. A design that is known in another unrelated design field will still be original. (Patent anticipation is clearly much wider in scope.)
In a case that was concerned with design rights in a slurry separator for use in the agricultural industries, it was held that the relevant design field was that of slurry separators, rather than any wider agricultural field. Evidence relating to agricultural machines or engineering outside this narrow field was irrelevant for the determination of whether the designs for the slurry separators were commonplace.40
The design field
Such a determination of the relevant design field remains, however, one of fact and degree for each case.41 The court is quite entitled to take the views of the customer, rather than the view of a design expert, into account when determining how broad the relevant field should be. For example, the customer would compare all types of window, whether made of aluminium, uPVC, or wood, rather than restrict him- or herself to uPVC windows, as might an expert.42 In addition, by pointing out that the design should not be commonplace, the Act clearly does not deprive of the required level of originality any design that has been circulated to a limited extent. Showing a limited number of items incorporating the new design at a trade fair, or consulting colleagues or potential customers on the qualities of the new design by showing them a drawing of it, will not necessarily make the design commonplace.
Further, the relevant moment in time is the creation of the design rather than the filing date of the application used in patent law. This is, of course, a consequence of the fact that there is no registration requirement for this design right. Arguably, this originality requirement comes close to the novelty requirement for registered designs, although p. 377↵there is a clear difference in relation to anticipation by publication for certain purposes in restricted circles.
When looking at the design field in question, no attention should be paid to when other designs in a certain field with which comparison was made were first produced, or to whether they were still in use or had fallen into disuse at the time at which the new design appeared. Old designs could not be excluded from the design field, because they could still form part of the design field in question, because, for example, designers and members of the public can still see them.43
A narrow approach
All of these elements are mere signposts in the direction of a commonplace test. What is clear is that the concept of ‘commonplace’ is to be given a narrow interpretation, because the design right itself should cover designs of functional items. A broad definition would—in combination with the shorter life of the right and the narrower protection against copying—effectively remove protection for the majority of such designs for functional items.44
A test was outlined by Mummery LJ in Farmers Build Ltd (in liq.) v. Carier Bulk Materials Handling Ltd.45 It can be summarized in the following four steps.
In a first stage, the court needs to ascertain how similar the design under consideration is to the design of similar items in the same design field that are made by third parties.
That comparative exercise needs to be carried out objectively in the light of expert evidence that highlights the similarities and differences between the various designs, and which explains their respective significance. The final decision on whether a design is commonplace rests with the court, and it involves a judgement of fact and degree that reflects the evidence of the particular case.
Designs are more likely to be commonplace if, in the absence of copying, they are close to one another. The closer the designs are, the more likely it becomes that they are commonplace, because this may be evidence of the fact that only one—commonplace—way of designing the item exists.
A design is not commonplace if it contains various aspects that are not found in any other design in the relevant design field, even if these aspects are found in the alleged infringer’s design.46
The tangible form requirement
No registration is required before a design can attract design protection, but one cannot protect something if the content—and thus the precise subject of protection—is not known. A design therefore has to have a tangible form if it is to attract design protection.47 This requirement can be met in two ways: the design can be recorded in a design document, as previously defined, or an item can be made to the design. The design right will subsist from the moment of recording or from the moment of incorporation onwards.48 And it is clear that the recording does not need to be made by the designer for this requirement to be met.49
p. 378↵In the case of registered designs, the tangible form is evidently required for the purposes of registration. One cannot, materially speaking, put together an application if the design does not exist, in the application, in a tangible form. In the registration system, the date of registration is the starting point for the term of protection. Because that element is not available in a system without registration, the date of recording is substituted for the date of registration.
The commencement date for the new design regime was 1 August 1989. Designs that were recorded in a design document or which were applied to an item before that date will not attract design right protection.50
Exceptions to the design right
Design rights will not subsist in a number of items. These are listed in s. 213(3) of the 1988 Act, as follows.
Methods or principles of construction
The first items on the list are ‘methods or principles of construction’.51 This is an obvious exception, which also exists in relation to registered designs.52 Particular features of shape or configuration—as applied to an item or a part of it—are protected, but not general, theoretical, and eventually underlying principles. This exception is similar in nature to the scientific theories and mathematical methods exceptions that relate to patentable subject matter.53
An interesting example of the operation of s. 213(3)(a) is provided by a case that was concerned with a design of a polyvinyl alcohol (PVA), warp-knitted, ladder-resistant, micromesh bait bag for anglers. The court held that the basic appearance of the design was generated by the Atlas warp-stitch method that had been used and that it therefore was nothing more than a method or principle of construction. As such, the design was excluded from protection as an unregistered design. Similarly, the layering of items in a combined urinary catheter removal and insertion pack was excluded.54
The arrangement of zippers and piping for the expansion section of a suitcase design, meanwhile, was held not to be a principle or method of construction.55 Indeed, the exception does not aim to preclude a design from protection merely because it has a functional purpose and other designers can still use the construction features in quite distinct designs. The exception aims rather to avoid monopolization of the entire principle method of construction and such monopolization did not occur in this case. Since design right does not protect ideas per se but only their actual physical manifestation, even if ideas may have been important in arriving at a certain design, s. 213(3)(a) operates to limit the level of generality permitted in defining a design. The more abstract the definition, the more likely it is that it will fail to pass the hurdle of s. 213(3)(a).56
Surface decoration
Also on the list is ‘surface decoration’,57 which does not come within the category of functional, rather than aesthetic, design that the 1988 Act set out to protect. Surface decoration p. 379↵includes two things: first, it includes decoration lying on the surface of the item; second, it includes decorative features of the surface itself. Surface decoration cannot be confined to features that are essentially two-dimensional and it also includes, potentially, those features that serve a functional purpose.58 Accordingly, the painted finish, cockbeading, and V-grooves that were all aspects of the external appearance of a single wall unit in a range of kitchens were excluded from the scope of the design protection that was held to exist in the unit.59 And as demonstrated by a case involving the dying of fabric used for a standard track top and the colourways used for that purpose, the concept of surface decoration not only involves cases in which the surface was covered with a thin layer, but also cases in which the decoration ran right through the item.60 The exclusion of certain aspects of the design as surface decoration does not mean, for example, that the rest of the (aspects of the) shape of the kitchen unit could not attract an (unregistered) design right.61 In the end what is involved is a value judgement in each case:62
A feature which is truly three-dimensional, rather than a surface feature, will fall outside the scope of the exclusion from design right (i.e. will therefore be covered by design right), regardless of whether its purpose is functional or decorative. The fact that a design feature exists in a third dimension, but only a small third dimension, does not mean that it must be surface decoration: there is a value judgment for the Court to make.63
‘Must fit’
One of the most important exceptions on the list is the ‘must fit’64 exception, which excludes ‘features of shape or configuration which enable the article to be connected to, placed in, around or against another article so that either article may perform its function’65 from the scope of the design right. The exception—which is also referred to as the ‘interface provision’—is confined to those situations in which two items, produced by one or two producers, are linked and certain features of shape or configuration enable either item to perform its function. It also applies to the interface features of two interfitting items that are later assembled together to form the whole, or part, of another, larger, item.66 The exception is confined strictly to those features that play this enabling role and which must be of a certain precise shape or configuration to be able to play it; other features of shape or configuration of the same item may well attract design protection.
No feature of shape or configuration will escape from the scope of the exception because it also performed some other purpose: for example, because it was also attractive.67 In certain cases, two or more different designs would enable the items to be fitted together in a way that allowed one or all of them to perform their function. In such cases, all of these designs fall within the exclusion and no (unregistered) design right will exist in them. This indicates the wide scope of the exception, which has, as its purpose, the prevention of ‘the designer of a piece of equipment from using design right to prevent others from making parts which fitted his equipment’.68 That purpose will only be met if the drafting, in wide terms p. 380↵of the exception, is given its proper wide and extensive interpretation. The word ‘article’—that is, item—can therefore be applied to living and formerly living things, as well as to inanimate things. This means that, in a case concerning contact lenses, the back radius, the diameter, and the parallel peripheral carrier of the contact lens were all excluded from the design right, because they were features that enabled the lens to fit against the eyeball so as to allow the lens to perform its function of correcting the focusing ability of the eye and to remain in a stable position in the eye.69 Another example is found in an electrical currency adaptor that allows the use of equipment built for 110V on the UK’s 220V system and which has many peculiar functional features of shape, but also rods that fit into a wall socket. This example may well result in design rights for the various features of shape, but no design right will subsist in the shape of the rods, because this shape will be dependent upon the shape of the socket, enabling the adaptor to be connected to the socket and the electricity network, and allowing the socket and the adaptor to perform their functions. Those features of the shape of leather cases for individual mobile phones that enable the cases to be placed around the phones, so that either the phones or the cases may perform their function, are yet another example of design features that fall foul of the exception.70
Many of these aspects of the ‘must fit’ exception have now been reviewed by the Court of Appeal in Dyson v. Qualtex.71 This case concerned spare parts for Dyson vacuum cleaners. Dyson claimed design protection, while Qualtex relied on the exception. The Court determined that once a handle is shaped in a certain way, for example, the catch must necessarily adopt a certain shape to fit with the handle. That latter shape is therefore covered by the exception. The words of the exception should not be interpreted particularly narrowly or widely. It does not matter that there are two ways of achieving the necessary fit or connection between the item and the item to which it fits. If the design chosen by the design right holder is a way of achieving that fit or interface, then it does not attract design right, no matter how many alternative ways of achieving the same fit or interface might be available. It is also not necessary for the items to touch each other for the exception to apply.72
This exception has an equivalent in s. 1(1)(b)(i) of the Registered Designs Act 1949, but the latter refers to the ‘purpose solely dictated by function’ and is therefore wider in scope.
‘Must match’
The second of the most important exceptions is the ‘must match’73 exception, which covers all features of shape or configuration that ‘are dependent upon the appearance of another article of which the article is intended by the designer to form an integral part’;74 the classic example of which would be the doors of a car. The design of the doors is determined by the appearance of the bodywork of the car. If I were to buy a door as a spare part for my car, it would be rather essential that it fits in the gap left in the body. When considering the ‘must match’ exception, the court will have to consider whether there is a dependency of the kind, or to the extent, that it would make the overall item in question radically different in appearance if the first item were not shaped as at present. Ultimately, this is a matter of fact, degree, and impression.75
Of course, the exception—like the ‘must fit’ exception—does not extend to other features of the same item; it does not apply if one item was not intended to form an integral part of another. For example, the features of a kitchen unit were not caught by the exclusion, because the complete kitchen unit was a series of matching items, none of which formed an integral part of another.76 The fact that one item could incidentally be made to form an p. 381↵integral part of another is not relevant. This also makes it clear that things made in sets—such as plates and glasses—are not covered by the exception. In these cases, one design will be applied to the whole set.
The example concerning the design of the doors of a car already indicates that spare parts occupy a special position in relation to the design right—but not only do they cover a very substantial part of the whole design activity, the exceptions also seem to exclude them almost entirely from design protection. This meets the need for competition in this area. The legislature found it unacceptable that the producer of an item could, through copyright (at one time) and design protection regimes, monopolize the spare-parts market. This market is opened up for competition by means of the ‘must fit’ and ‘must match’ exceptions to the design right. But the fact that other features are not covered by the exception can create some difficulty: on the one hand, the alternative producer of spare parts should be careful not to infringe the design right in these features, should it exist; on the other, the fact can be seen as a tool through which the original producer is enabled to distinguish its spare parts from those of alternative producers.
Qualification
Designs that meet all previous requirements will only be protected if they meet one additional requirement: the design should also qualify for protection. This requirement is very similar to the qualification requirement in copyright, and forms an inherent part of any intellectual property right that is not subject to a registration requirement and which is, after all, granted on a national basis. The qualification requirement is met if the designer,77 the commissioner of the design78 (if the design is commissioned for money or money’s worth),79 or the employer of the designer80 (for designs created in the course of employment) is a qualifying person. The position of the designer is only relevant if the design is created neither in the course of employment, nor in pursuance of a commission.81
The system starts with the definition of what is a ‘qualifying country’.82 This is defined as the UK and the other member states of the European Union, eventually supplemented by other countries by an Order in Council.83 A qualifying individual is a citizen of, or an individual habitually resident in, such a qualifying country. Together with any corporate body or any body having legal personality that is formed under the law of a qualifying country or which has at least a place of business at which substantial business activity84 is carried out in a qualifying country, these qualifying individuals comprise the category of the qualifying persons.85
The qualification requirement can also be met by reference to the country and person of first marketing of items made to the design if the designer and, eventually, the commissioner or employer do not qualify.86 This is the case if the first marketing takes place by a qualifying person in a qualifying country. On top of that, the qualifying person must be exclusively authorized by the person who would have been the first owner of the design right, if it came into existence, to put the items made to the design on the market in the UK and that exclusivity must be enforceable by legal proceedings in the UK. For qualification purposes, the place at which the design was created is utterly irrelevant.
p. 382The substance of the design right
The design right is a property right87 that grants to its owner the exclusive right to reproduce the design for commercial purposes. The obvious way to do so is by making items to the design, but the owner can also make a design document in which the design is recorded and which enables such items to be made by a third party.88 An item is reproduced for ‘commercial purposes’ if the reproduction is undertaken with a view to its being sold or hired in the course of business.89
The person behind the design
The preceding analysis refers often to the ‘person behind the design’; it is now time to fill in that notion. The designer is the person who creates the design.90 Should this rule lead us to a computer, the person that undertakes the necessary arrangements for the creation of the design by the computer will be regarded as the designer.91 Creation should be interpreted as having the idea for the design; it does not necessarily include the recording of the design.92
This leads us to the issue of who will be the first owner of the design. If the design is neither commissioned, nor created in the course of employment, the designer will be the first owner of the design right.93 The commissioner and the employer are the first owners of the design right in a design created in pursuance of a commission or in the course of employment, respectively.94 A particular problem arises, in practice, when a design is created by a 100 per cent shareholder of a company through which he or she carries on business: is such a person employed by the company or did the company commission the design?
The Court of Appeal has shed some light on the matter by holding that a contract of employment—even if it can be concluded entirely orally—requires the presence of three elements, as follows:95
The alleged employee must have agreed that, in consideration for a wage or any other form of consideration, he or she would provide skill and labour in the performance of some service for his or her employer.
Expressly or impliedly, the alleged employee must have accepted that, in the performance of that service, he or she would be subject to the control of the employer to such an extent that the employer can be described as his or her ‘master’.
The other provisions of the contract must be consistent with it being a contract of employment.96
The idea of commissioning a work involved, in the eyes of the Court of Appeal, a contract involving mutual obligations prior to the production of the relevant design.97 If neither of these situations occur, but if the 100 per cent shareholder acts for the company and created the design through the company, the shareholder will hold the design and any rights in it in trust for the company.98
p. 383↵These rules apply in all circumstances except in those of s. 220 of the 1988 Act: if the design qualifies through first marketing only, the first owner of the design right will be the person that markets the items made to the design.99
Joint creation—which will arise when the contribution of two or more designers is not distinct and cannot be distinguished—and joint ownership are also possible, and do not create specific problems. It is worth pointing out, however, that in cases in which not all of the persons involved are qualifying persons, only those that are will be entitled to the design right;100 the design, meanwhile, will meet the qualifying requirement as soon as any of the persons involved is a qualifying person.101 A design jointly created by eight designers, for example, will qualify for design protection as long as one of the designers is a qualifying person. In that case, that one (qualifying) person alone will be entitled to the design right. Should four of the designers qualify, the four of them will be jointly entitled to the design right. In any case, designers that are not qualifying persons will not be entitled to the design right.
The term of (unregistered) design protection
We have already discussed the fact that the design right comes into existence at the moment at which it is either recorded in a design document or when an item is made to the design. As with most terms in copyright, the duration of the design right is then linked to the end of the calendar year in which such recording or production takes place. We will call this important point the ‘end of the creation year’.
Most designs will be exploited before the end of a five-year period, which starts running from the end of the creation year. If such exploitation takes the form of items made to the design being made available for sale or hire, the term of (unregistered) design protection is ten years. This term starts running at the end of the calendar year during which the exploitation first occurred.102 The exploitation can take place anywhere in the world, as long as it is done by the owner of the design right or with its licence.103
The absence of exploitation, as already defined, within the first five years does not, however, lead to an unlimited design right protection. In that case, the term of (unregistered) design protection expires 15 years after the end of the creation year.104
These terms of protection are substantially shorter than those used in copyright and are much more in line with those used in patent law. This is probably a recognition of the fact that functional designs are, in general, an industrial property right and that a fair return on the investment they require can be obtained in a relatively short period. As we have seen in Chapter 1 of this book, the term of protection should indeed be linked to the determination of the correct balance between the innovation (creation of new designs) and production levels (items produced to the design). Approximately ten years of design exclusivity will allow for the ongoing creation of new designs and will not unduly restrict the free use of the design.
Infringement and remedies
Primary infringement
Because the owner of the design right has the exclusive right to reproduce the design for commercial purposes, the design right will, first of all, be infringed by anyone making an item to the design without the licence of the owner of the design right and by anyone p. 384↵making a design document that records the design for the purpose of enabling someone to make items to it if, once again, this is done without the licence of the design right owner. One can immediately add to this the case in which someone authorizes someone else to do one of these two things.
Design right infringement is subject to the same principles as copyright infringement.105 This means, first, that an objective similarity between the allegedly infringing item and the design must exist. All features that are covered by an exclusion—such as the interface exclusion—should be disregarded for this purpose. Secondly, a causal connection between the design and the allegedly infringing item needs to be established.106
Making items to the design
The act of making items to the design is circumscribed more precisely: the design has to be copied in such a way that items exactly or substantially similar to the design are produced. Mere similarity is not sufficient. This latter element involves an objective test that should be decided through the eyes of the person to whom the design is directed107—that is, the person who will use the items made to the design. In a case that was concerned with design rights in the features of shape of a kitchen unit, the design was held to be directed to the person interested in buying a fitted kitchen.108
That person should look at the similarities and differences between the two designs. Infringement will arise if the allegedly infringing item is simply made to the claimant’s design or if it is made substantially to that design. The latter situation will definitely cover all occasions on which all of the elements linked to the functional role of the design have been copied and the differences are not relevant for that role. It is submitted that the approach should bear important similarities to that adopted in relation to patent law in the Catnic case,109 but only the case law can shed some more light on this issue in a decisive way over the next few years. In addition, it should be emphasized that the objective test through the eyes of the person to whom the design is directed may involve the item being dismantled to allow that person to compare the designs if they apply to an internal part of the item, because design rights can exist in features of shape or configuration of an internal part of the item. Despite the fact that design right infringement shares some of its principles with copyright infringement, it is important to stress that, on this point, there clearly are differences and that similarities with patent law also creep in. As the Court of Appeal put it, there is a difference between an enquiry into whether the item copied forms a substantial part of a copyright work and an enquiry into whether the whole design containing the element that had been copied was substantially the same design as that which enjoyed design right protection.110
In practice one does essentially look for evidence of copying. Once copying has been established, it normally follows that items that are exactly or substantially similar to the design have been produced. In examining copying one looks for what has been copied by comparing the allegedly infringing article to the document or article incorporating the design. One looks at the similarities and the differences, even if at this stage the similarities are more important. It is the role of the expert witnesses to point out these similarities and differences to the court, as well as their importance, but the decision on copying remains a decision of the court and the witnesses should not draw a conclusion on this point in their p. 385↵evidence.111 One should also be wary of the similarities that are not the result of copying but of the functional nature of the design. Shared functional requirements can indeed also be an explanation for certain similarities. Mummery LJ expressed this warning as follows:
Substantial similarity of design might well give rise to a suspicion and an allegation of copying in cases where substantial similarity was often not the result of copying but an inevitable consequence of the functional nature of the design … Copying may be inferred from proof of access to the protected work, coupled with substantial similarity. This may lead to unfounded infringement claims in the case of functional works, which are usually bound to be substantially similar to one another.
… [The court] must not forget that, in the field of designs of functional articles, one design may be very similar to, or even identical with, another design and yet not be a copy: it may be an original and independent shape and configuration coincidentally the same or similar.112
Finally, when looking at substantiality one should steer clear of the somewhat simplistic approach along the lines of the University of London Press v. University Tutorial Press (what is worth copying is prima facie worth protection).113 In relation to designs the copied elements can be swamped by additional elements and features. The (new) article will then no longer substantially be made to the design.114
An objective test
It is extremely important, however, to see what is being compared in the objective test and it is respectfully submitted that the approach taken obiter115 in the Klucznik case116 is not detailed enough.117 Infringement is situated in the fact of making items to the design without having obtained a licence to do so—but the design right covers features of shape or configuration of the whole, or part, of the item and the test is directed to see whether the design right has been infringed. It is submitted that s. 226(2) of the 1988 Act directs us to look at the similarities and differences between the designs, rather than between the items. If the design right covers features of shape or configuration of the whole item, the result will not necessarily vary, but the importance of the nuance is found in the fact that the design right can also cover features of shape or configuration of a part of the item. Making reference to the whole item would, in such a case, reduce the number of cases in which infringements would be found substantially and weaken the design right as such. It would also be absurd to take into account additional non-protected features and, eventually, features that form the subject of another design right, and which are applied to another part of the same item in deciding whether a design right has been infringed. The test should only take into consideration those parts of the item to which the design refers, although this can eventually be the whole item;118 otherwise, there could almost never be an infringement when only the design for part of an item is reproduced. But the emphasis on the design does not change p. 386↵the fact that the observer is forced to compare the original design to the item in which allegedly a substantial part of the design has been copied. One should ‘ask oneself what by way of comparative design would be suggested to the interested observer’119 and this should be done in the light of the entirety of the allegedly infringing item.
This issue arose in part because whereas, in the definition of a design, reference is made to aspects of shape or configuration of the whole or part of an article, that reference to a part of the article is not found in the context of infringement in s. 226(3). There the reference is only to the article as a whole. The High Court has now clarified that in terms of reproduction the infringement can also refer to a part only of the article—that is to say, Parliament did not intend that the approach in terms of infringement would be more restrictive than when defining the design.120
In the Klucznik case, the test was indeed described as an objective one, having the pig farmer—as the person to whom the design is directed—look at the similarities and differences between the two pig fenders. The conclusion reached was that the designs were not substantially the same, but it is submitted that this conclusion could be wrong, because it relies on an additional feature of the allegedly infringing fender. This feature was not part of the design right that was allegedly infringed and the features of shape covered by the design right—that is, the two-inch tube—were only features of the shape of a part of the fender. Attention should, in this case, primarily be directed to that part of the fender and other additional features should be left aside. One should only turn to the whole of the allegedly infringing item in a second stage to determine whether its overall features allow for a conclusion that the overall impression of the observer is not that the allegedly infringing item has been made to the original design; this should only be the case if the other features have become its essential features. In that case, the item is no longer produced to the original design, even if the two have certain aspects in common. This slightly more complicated test follows from the fact that design infringement is not completely similar to copyright infringement and that additional emphasis is put on the point that the copying must lead to the production of an item exactly, or substantially, to the design. That judgement, in relation to the allegedly infringing item, comes on top of the copyright-style substantial copying test (from one design to another, or to the relevant part of the allegedly infringing item).
An enabling recording
The enabling recording of a design document as an infringing activity bears strong similarities to its equivalent in copyright, but it is slightly harder to prove the design version. The recording should be made for the purpose of enabling someone to make items to the design. The only purpose one needs to establish for its copyright infringement alternative is the purpose to copy;121 the design intention should be present at the time at which the recording was made, otherwise the recording was not made for that purpose. It is, indeed, not sufficient that the recording can eventually later be used to enable someone to make items to the design.
Direct or indirect reproduction
The reproduction of the design may be direct or indirect. Indirect reproduction will still infringe, even if the intervening acts do not infringe the design right themselves.122 This has important consequences in relation to the reverse engineering of designs. One can easily p. 387↵take apart an item made to the design, analyse the design, and copy the non-protected elements; eventually, this can lead to the creation of a new original design. But if reverse engineering simply precedes reproduction, making an item to the design will still infringe.
Innocent infringement
Innocent infringement is possible. This clarification is made indirectly in s. 233 of the 1988 Act. If, at the time of the infringement, the defendant was unaware and had no reason to believe that a design right subsisted in the design, the claimant will not be entitled to damages against the defendant. Other remedies do, however, remain available.123 This provision offers a limited amount of protection to the reasonable bona fide user of the design who thought that there was no design right he or she could be infringing. This is bound to happen on a number of occasions, such as when a user cannot check in any register of designs in order to pre-empt this situation.
Secondary infringement
The design right will also be infringed if a person does any of the following acts in relation to an infringing item without the licence of the owner of the design right:
imports the item into the UK for commercial purposes;124
has the item in his or her possession for commercial purposes;125
sells, hires, or offers or exposes for sale or hire, the item in the course of a business.126
First of all, what is an infringing item? An item is an infringing item if the making of the item to the design constituted an infringement of the design right in the design.127 Items that have been imported into the UK, or which are proposed to be imported into it, and the making of which would have constituted an infringement of the design right (or a breach of an exclusive licence agreement) had the items been made in the UK are also infringing items.128 In addition, an action for secondary design infringement can only be successful if it is proven that the defendant knew, or had reason to believe, that the item was infringing.129 This additional knowledge requirement is identical to that found in copyright and does not exist for registered designs.130
This knowledge requirement, taken in combination with the fact that only designs created after the commencement date of the design provisions of the 1988 Act attract design protection, could create a problem for the claimant in proving that the item was made at a time when the right subsisted and is thus an infringing item. The Act therefore introduced a presumption in favour of the claimant. The item made to the design is presumed to have been made at a time when the design right in the design subsisted, unless the contrary can be proven.131 This is even more favourable for the claimant, because he or she will quite often be the only person able to prove when the design right first arose.
If the defendant in an action for secondary infringement is able to show that he or she, or a predecessor in title, acquired the infringing item innocently, this will not imply that the action is bound to fail; rather, it only restricts the remedies available to damages of up to what would be a reasonable amount of royalties in respect of the complained-of act.132
p. 388Defences
A defendant in a design-right infringement action can try to argue that the design right has expired, or that it was not valid in the first place because one of the requirements was not met and that the design right thus never came into existence. Apart from these arguments, it is obvious that the defendant will try to argue that the requirements for primary and secondary infringement to take place have not been met. A last defence could, in relevant cases, be based on s. 236 of the 1988 Act.
These relevant cases are those in which copyright exists in a work that consists of, or includes, a design in which a design right subsists. Anything that is an infringement of the copyright in the work will not be an infringement of the design right.133 This provision clearly aims to complete the separation between copyright and design right. It applies to design-right infringement cases, whereas s. 51 applies to the copyright infringement cases.
Commercial exploitation
Assignment and licences
As is the case with most other intellectual property rights, an (unregistered) design right can be exploited commercially in various ways. Owners of the design right can exploit the right themselves by making an item to the design, but can also leave the exploitation or part of it to a third party. In such cases, the design right can be assigned or a licence can be granted. An assignment can be compared to a sale and is particularly appropriate if the owners of the design right do not want to exploit the design themselves. Granting a licence is more like hiring out the right to use the design. If the licence is not exclusive, it allows the owners to exploit the design themselves too and even the exclusive licence may ultimately expire, at which point the exploitation right will return to the owners.
This is, of course, only a rough description of assignments and licences. They can be moulded to perform special functions through the insertion of special clauses in the contract. A future design right—that is, one that will, or may, come into being—can be the subject of an assignment or of a licence. The same rules apply to the exploitation of both the existing design right and the future design right.134
Assignments
When the design right is assigned, this must be done in writing and the assignment must be signed by, or on behalf of, the owner-assignor.135 An assignment effectively transfers the design right to the assignee, but it can be partial in two ways:136
The assignment can be limited in terms of its duration. This implies that the design right returns to the assignor after the expiry of the term agreed in the assignment contract.
It can also be limited in scope, in the sense that not all of the exclusive rights of the owner are assigned to the assignee.
In relation to the rights assigned to him or her, the assignee has exactly the same rights as those that the owner-assignor had before the assignment and would have had if the assignment had not taken place.
p. 389↵Apart from by assignment, the design right can also be transferred by testamentary disposition or by the operation of law,137 such as in the case of a liquidation of a company that owned a design right.
Licences
The alternative to an assignment is a licence, which authorizes the licensee to do certain things in relation to the design right. The owner can grant an exclusive licence or a non-exclusive licence: an exclusive licence gives the licensee the exclusive right to exploit the design right in a certain area and/or the exclusive right to exploit the design right in a certain way. All other persons—including the owner-licensor—are excluded from exploiting the design right in the area and/or form of exploitation covered by the exclusive licence. Such a licence has to be in writing and signed by, or on behalf of, the owner-licensor of the design right,138 and it gives the exclusive licensee the same rights and remedies as an assignment. But there is one exception to the latter point: the rights and remedies are not the same in relation to the owner-licensor. The exclusive licensee can, as can the assignee, act independently against infringers139—but because the licensor retains certain rights in relation to the design right, there will be cases in which the two parties have a right of action. The Act calls this a ‘concurrent right of action’ and requires that the other party is either joined as a claimant or added as a defendant before the action proceeds.140
One or more non-exclusive licences can also be granted and these may give the licensee the non-exclusive right to exploit the design right in a certain area and/or the non-exclusive right to exploit the design right in a certain way. The licensor will remain free to exploit the design right him- or herself and may also appoint other licensees. There are no requirements regarding the format of a non-exclusive licence and the licensor will have to rely on the contract in infringement cases. No rights to act independently are transferred; the licensee will have to request the licensor to take action against the infringer. A licence granted by the owner of the design right shall normally bind him or her and every successor in title. It will not bind a purchaser of the design right who purchases in good faith, for valuable consideration, and who has no actual or constructive notice of the licence.141 An assignor who meets the additional requirements could be such a purchaser. This clearly puts the licensee in a weaker position than the licensor and makes an assignment theoretically more attractive than a licence. It remains to be seen, however, whether an assignment is available in practice and, even if that is the case, the higher price linked to it may well outweigh the advantage.
Licences of right
Licences of right are available during the last five years of the term of protection offered by the design right. This weakens the value of the design right, but opens another opportunity for the exploitation of the design right. The Comptroller-General of Patents, Designs and Trade Marks will settle the terms of the licence if the parties fail to agree upon it.142 It will not always be easy for the potential licensee to find out when these licences of right become available, because, in cases in which the design is recorded some time before it is exploited, the owner of the design right is often the only person to know the real date on which the design right came into existence.
One design, two design rights
Some designs meet the requirements of the Registered Designs Act 1949 as well as those for the (unregistered) design right. If they are registered, they will attract double design p. 390↵protection. An example may be a teapot, the spout or handle of which is both aesthetically pleasing and also fulfils a functional role. This could create problems when only one right is assigned or licensed and commercial exploitation of the design takes place. This could constitute an infringement of the other design. The Act therefore provides that, if the owners of both design rights are the same persons, an assignment of the registered design will include an assignment of the (unregistered) design right unless an intention to the contrary appears from the transaction or its circumstances.143 The opposite situation is covered by s. 19(3B) of the Registered Designs Act 1949, which provides that, if the owners of both design rights are the same persons, an assignment of the (unregistered) design right will include an assignment of the registered design unless an intention to the contrary appears.
This is, of course, only a partial solution. The presumption may be rebutted and the rights may become separated, should different persons own them. The latter risk is reduced by the fact that the Registrar is not supposed to register a registered design if the person who claims to be the owner of the design right does not make the application.144 The legislature clearly attempts to keep the ownership of both design rights in the same hands, while leaving it up to the parties to negotiate the terms of the licences, which are just a temporary right to use. It can indeed be accepted that no one would agree to a licence for one of the rights if the use of that right would infringe the second design right and that, even if that were the case, the courts might imply a licence for the second design right.
Crown use
The 1988 Act also contains provisions on Crown use of design rights. It refers to the use by the Crown without a licence, but with a form of remuneration of designs protected by design rights, for purposes such as health and other needs of the services of the Crown. There are also provisions on the supply of items made to the design for foreign defence purposes.145
Competition law
Agreements on the exploitation of design rights may infringe competition law. In relation to UK competition law, the 1988 Act allows action to be taken in such cases,146 but the most relevant provisions are to be found in the EC Treaty. Licence agreements in relation to design rights may infringe Art. 101 of the Treaty on the Functioning of the European Union. We may refer here to our discussion of this Treaty provision in Chapter 18, because it applies in the same way to all intellectual property rights. Suffice it to say that no block exemption covers design rights. In theory, there is also no reason why Art. 102 of the Treaty on the abuse of a dominant position could not apply in relation to a design right, although it is not too likely that such a case will often arise in practice.
The European Court of Justice was invited to rule on the relationship between design rights and the free movement provisions of the EC Treaty in Keurkoop v. Nancy Kean Gifts.147 The judgment makes it clear that designs form an intellectual property right for the purposes of these provisions and that the exhaustion doctrine applies to them. The Court did not find it necessary, however, to define the specific subject matter of designs, because it could reach its conclusion without doing so. It said that, in the absence of Community harmonization, it is left to the member states to decide which system of design rights they p. 391↵have, and to decide accordingly on the terms and conditions under which protection is granted. The existing disparity did not influence the applicability of the free movement provisions to design rights. This means that there is nothing special about design rights in this context and that the principles that we have discussed in relation to other intellectual property rights apply equally to them.
An overview
Unregistered designs are essentially functional, non-aesthetic designs. The 1988 Act defines them as the design of any aspect of the shape or configuration (whether internal or external) of the whole, or part, of an item. In order to attract protection, such a design must be original, in the sense that it should not be commonplace in the design field in question at the time of its creation.
Certain items are excluded from design protection, essentially because a design right in them would confer upon the right holder an unduly broad exclusive right. There is clearly an underlying logic that other designers should be able to come up with another design that has the same functional effectiveness. Granting design rights for methods or principles of construction, or for designs that must fit or must match, would undermine that logic. Surface decoration is also excluded, because its functional credentials are weaker.
Unregistered design rights roughly offer 15 years of protection during which the right holder has the exclusive right to reproduce the design for commercial purposes. Infringement will therefore consist in anyone making an item to the design without authorization and in the making of a design document that records the design for the purposes of enabling someone else to make items to it, again without authorization. Authorizing someone else to do either of these two things will also constitute an infringement. Just as in copyright, there are also provisions on secondary infringement that cover dealing with infringing items.
Further reading
Notes
1 At that stage, 15 years; now extended to 25 years, as discussed in the previous chapter.
2 Dorling v. Honnor Marine Ltd [1965] Ch 1, [1964] 1 All ER 241.
3 Even if the design had been registered, the term of protection would have been much shorter.
4 [1986] AC 577, [1986] 1 All ER 850.
5 CDPA 1988, s. 213(2).
6 Sales v. Stromberg [2006] FSR 7.
7 Lambretta Clothing Co. Ltd v. Teddy Smith (UK) Ltd & anor [2005] RPC 6 (CA).
8 Lambretta Clothing Co. Ltd (n. 7).
9 A. Fulton Co. Ltd v. Totes Isotoner (UK) Ltd [2004] RPC 301 (CA), at 311.
10 A. Fulton Co. Ltd (n. 9) at 307–11; Albert Packaging Ltd v. Nampak Cartons & Healthcare Ltd [2011] EWPCC 15, [2011] FSR 32.
11 Farmers Build Ltd (in liq.) v. Carier Bulk Materials Handling Ltd [1999] RPC 461.
12 C & H Engineering v. Klucznik & Sons Ltd [1992] FSR 421, per Aldous J at 428; see J. Turner, ‘A True Design Right: C & H Engineering v. Klucznik and Sons’ (1993) 1 EIPR 24.
13 Electronic Techniques (Anglia) Ltd v. Critchley Components Ltd [1997] FSR 401; Scholes Windows Ltd v. Magnet Ltd (No. 1) [2002] FSR 172 (CA) at 180.
14 Scholes Windows Ltd v. Magnet Ltd (No. 1) (n. 13) at 180.
15 Ocular Sciences Ltd & another v. Aspect Vision Care Ltd; Geoffrey Harrison Galley v. Ocular Sciences Ltd [1997] RPC 289 at 423.
16 DKH Retail Ltd v. H. Young (Operations) Ltd [2014] EWHC 4034 (IPEC).
17 Ibid., at para. 18.
18 Whitby Specialist Vehicles Ltd v. Yorkshire Specialist Vehicles Ltd and others [2014] EWHC 4242 (Pat) at paras. 40–5.
19 Neptune (Europe) Ltd v. Devol Kitchens Ltd [2017] EWHC 2172 (Pat).
20 Ocular Sciences (n. 15).
21 Neptune (Europe) Ltd (n. 19) at para. 44.
22 Lambretta Clothing Co. Ltd (n. 7) at para. 12.
23 Farmers Build Ltd (in liq.) (n. 11), per Mummery LJ at 475; C & H Engineering (n. 12).
24 Whitby Specialist Vehicles Ltd (n. 18).
25 Raft Ltd v. Freestyle of Newhaven Ltd, Christophe Eric Horsnell and Highly Sprung Ltd [2016] EWHC 1711 (IPEC), paras. 6–9.
26 Guild v. Eskander Ltd [2003] FSR 23 (CA) at 39.
27 Albert Packaging Ltd v. Nampak Cartons & Healthcare Ltd [2011] EWPCC 15, [2011] FSR 32 at para. 14.
28 Ultraframe (UK) Ltd v. Eurocell Building Plastics Ltd [2004] EWHC 1785; [2005] RPC 7 at 130–1.
29 Raft Ltd v. Freestyle (n. 25), para. 10.
30 Ocular Sciences (n. 15) at 429, in which there was a reference to semiconductor products and the design right in them. The definition was repeated in Mayfair Brassware v. Aqualine International Ltd [1998] FSR 135, in a context that refers to design rights.
31 Philip Parker v. Stephen Tidball [1997] FSR 680.
32 Farmers Build Ltd (in liq.) (n. 11), per Mummery LJ at 476.
33 Farmers Build Ltd (in liq.) (n. 11), per Mummery LJ at 483.
34 Philip Parker v. Stephen Tidball (n. 31).
35 Farmers Build Ltd (in liq.) (n. 11), per Mummery LJ at 476.
36 The fact that a design becomes well known does not mean it loses its design right, but further variations may become commonplace: see Dyson Ltd v. Qualtex (UK) Ltd [2006] RPC 31 (CA).
37 Ocular Sciences (n. 15) at 423.
38 See Dyson Ltd v. Qualtex (UK) Ltd [2005] RPC 19.
39 Farmers Build Ltd (in liq.) (n. 11), per Mummery LJ at 481.
40 Farmers Build Ltd (in liq.) (n. 11), per Mummery LJ at 476.
41 See Ultraframe (UK) Ltd v. Eurocell Building Plastics Ltd [2005] RPC 36 (CA).
42 See Scholes Windows Ltd v. Magnet Ltd (No. 1) (n. 13) at 182.
43 Scholes Windows Ltd v. Magnet Ltd (No. 1) (n. 13) at 181–2.
44 Farmers Build Ltd (in liq.) (n. 11), per Mummery LJ at 481.
45 Farmers Build Ltd (in liq.) (n. 11) at 481.
46 Farmers Build Ltd (in liq.) (n. 11), per Mummery LJ at 482. See also A. Fulton Co. Ltd v. Grant Barnett & Co. Ltd [2001] RPC 257.
47 CDPA 1988, s. 213(6).
48 CDPA 1988, s. 213(6).
49 C & H Engineering (n. 12), per Aldous J at 428.
50 CDPA 1988, s. 213(7).
51 CDPA 1988, s. 213(3)(a).
52 See Registered Designs Act 1949, s. 1(1)(a).
53 Patents Act 1977, s. 1(2)(a).
54 Bailey (t/a Elite Angling Products) v. Haynes (t/a Rags) [2007] FSR 10; and Clinisupplies Ltd v. Karen Park, Richardson Healthcare Ltd and Mayur Patel [2012] EWHC 3453 (Ch) respectively.
55 Landor & Hawa International Ltd v. Azure Designs Ltd [2006] ECDR 31, [2007] FSR 9 (CA).
56 Landor & Hawa International Ltd (n. 55); Rolawn Ltd v. Turfmech Machinery Ltd [2008] RPC 27; and Albert Packaging Ltd v. Nampak Cartons & Healthcare Ltd [2011] EWPCC 15, [2011] FSR 32 at paras. 18–22.
57 CDPA 1988, s. 213(3)(c).
58 A visor-stiffening effect of the double-scalloping feature of a firefighter’s helmet does not bring it outside the scope of the exception for surface decoration: see Helmut Integrated Systems Ltd v. Tunnard [2006] FSR 41.
59 Mark Wilkinson Furniture Ltd v. Woodcraft Designs (Radcliffe) Ltd [1998] FSR 63.
60 Lambretta Clothing Co. Ltd (n. 7).
61 Mark Wilkinson Furniture Ltd (n. 59).
62 Neptune (Europe) Ltd (n. 19) at para. 26.
63 M. Howe, J. St Ville, and A. Chantrielle, (2016) Russell-Clarke and Howe on Industrial Designs, 9th edn, London: Sweet & Maxwell, at [4-037].
64 CDPA 1988, s. 213(3)(b)(i).
65 CDPA 1988, s. 213(3)(b)(i).
66 Electronic Techniques (Anglia) Ltd v. Critchley Components Ltd [1997] FSR 401.
67 Ocular Sciences (n. 15) at 424.
68 Ocular Sciences (n. 15), per Laddie J.
69 Ocular Sciences (n. 15) at 425–8.
70 Philip Parker v. Stephen Tidball (n. 31).
71 Dyson Ltd v. Qualtex (UK) Ltd [2005] RPC 19, affirmed [2006] RPC 31 (CA).
72 Dyson Ltd (n. 71).
73 CDPA 1988, s. 213(3)(b)(ii).
74 CDPA 1988, s. 213(3)(b)(ii).
75 Dyson Ltd (n. 71).
76 Mark Wilkinson Furniture Ltd (n. 59).
77 CDPA 1988, s. 218(2).
78 CDPA 1988, s. 219(1).
79 CDPA 1988, s. 263(1).
80 CDPA 1988, s. 219(1).
81 CDPA 1988, s. 218(1).
82 CDPA 1988, s. 217(3).
83 See Design Right (Reciprocal Protection) (No. 2) Order 1989, SI 1989/1294.
84 ‘Dealings in goods which are at all material times outside the country’ shall not be taken into account: CDPA 1988, s. 217(5).
85 CDPA 1988, s. 217(1).
86 CDPA 1988, s. 220.
87 CDPA 1988, s. 213(1).
88 CDPA 1988, s. 226(1).
89 CDPA 1988, s. 263(3).
90 CDPA 1988, s. 214(1).
91 CDPA 1988, s. 214(2).
92 C & H Engineering (n. 12), per Aldous J at 428.
93 CDPA 1988, s. 215(1).
94 CDPA 1988, s. 215(2) and (3). The person asserting a commission will need to prove it, see Bruhn Newtech Ltd v. Datanetex Ltd [2012] EWPCC 17.
95 Ultraframe UK Ltd v. Fielding [2004] RPC 479 (CA).
96 Ultraframe UK Ltd (n. 95); Ready Mixed Concrete (South East) Ltd v. Minister of Pensions & National Insurance [1968] 2 QB 497.
97 Ultraframe UK Ltd (n. 95); Ready Mixed Concrete (n. 96); Apple Corps Ltd v. Cooper [1993] FSR 286.
98 Ultraframe UK Ltd (n. 95).
99 CDPA 1988, s. 215(4).
100 CDPA 1988, ss. 218(4) and 219(3).
101 CDPA 1988, ss. 218(3) and 219(2).
102 CDPA 1988, s. 216(1)(b).
103 CDPA 1988, s. 216(2).
104 CDPA 1988, s. 216(1)(a).
105 Mark Wilkinson Furniture Ltd (n. 59).
106 As in the equivalent copyright cases, it is not required that the infringer has the protected design in front of him or her when the allegedly infringing item is made: see Philip Parker v. Stephen Tidball (n. 31).
107 C & H Engineering (n. 12), per Aldous J at 428.
108 Mark Wilkinson Furniture Ltd (n. 59).
109 Catnic Components Ltd and anor v. Hill & Smith Ltd [1982] RPC 183.
110 L. Woolley Jewellers Ltd v. A and A Jewellery Ltd [2003] FSR 255 (CA).
111 Virgin Atlantic Airways v. Premium Aircraft Interiors Group [2009] ECDR 11 (an appeal followed, but this concerned only the patent issues).
112 Farmers Build Ltd (in liq.) (n. 11), per Mummery LJ at 481–2. See also Albert Packaging Ltd v. Nampak Cartons & Healthcare Ltd [2011] EWPCC 15, [2011] FSR 32, and Kohler Mira Ltd v. Bristan Group Ltd [2013] EWPCC 2.
113 [1916] 2 Ch 601, at 610.
114 DKH Retail Ltd v. H. Young (Operations) Ltd [2014] EWHC 4034 (IPEC).
115 Klucznik’s claim to the design right failed because Aldous J was unable to reach the conclusion that it was the owner of the design (had Klucznik thought of it or had C & H Engineering thought of it?), thus the infringement action accordingly also failed. Aldous J nevertheless considered the infringement issue, but that part of the judgment is thus obiter.
116 C & H Engineering (n. 12).
117 C & H Engineering (n. 12), per Aldous J at 428, but the approach nevertheless received support from a differently constituted Court of Appeal in L. Woolley Jewellers Ltd v. A and A Jewellery Ltd [2003] FSR 255 (CA).
118 Cf. J. Turner, ‘A True Design Right: C & H Engineering v. Klucznik and Sons’ (1993) 1 EIPR 24, 25.
119 Philip Parker v. Stephen Tidball (n. 31).
120 Virgin Atlantic Airways v. Premium Aircraft Interiors Group [2009] ECDR 11 (an appeal followed, but this concerned only the patent issues).
121 H. MacQueen, ‘A Scottish Case on Unregistered Designs’ (1994) 2 EIPR 86, 87.
122 CDPA 1988, s. 226(4).
123 CDPA 1988, s. 233(1).
124 CDPA 1988, s. 227(1)(a).
125 CDPA 1988, s. 227(1)(b).
126 CDPA 1988, s. 227(1)(c).
127 CDPA 1988, s. 228(2).
128 CDPA 1988, s. 228(3).
129 CDPA 1988, s. 227(1).
131 CDPA 1988, s. 228(4).
132 CDPA 1988, s. 233(2). See Badge Sales v. PSM International [2006] FSR 1.
133 CDPA 1988, s. 236.
134 CDPA 1988, s. 223.
135 CDPA 1988, s. 222(3).
136 CDPA 1988, s. 222(2).
137 CDPA 1988, s. 222(1).
138 CDPA 1988, s. 225(1).
139 CDPA 1988, s. 234.
140 CDPA 1988, s. 235(1).
141 CDPA 1988, s. 222(4).
142 CDPA 1988, s. 237.
143 CDPA 1988, s. 224.
144 Registered Designs Act 1949, s. 3.
145 CDPA 1988, see ss. 240–4.
146 CDPA 1988, s. 238.
147 Case 144/81, Keurkoop BV v. Nancy Kean Gifts BV [1982] ECR 2853, [1983] 2 CMLR 47.
