In the recent Intellectual Property Enterprise Court case DKH Retail Ltd v H Young (Operations) Ltd [2014] EWHC 4034 (8 December 2014), H. Young (Operations) Limited (“H Young”) has  been found to have infringed UK and Community unregistered design rights owned by DKH Retail Ltd (“DKH”) in a men’s gilet.

In another designs case, the High Court (Patents Court) has found that the defendant company Yorkshire Specialist Vehicles (“Yorkshire”), together with a fourth individual, has infringed UK registered and unregistered design rights in aspects of the ice cream van design of the claimant, Whitby Specialist Vehicles Limited (“Whitby”). Whitby’s UK registered trade mark was also found to have been infringed.

The law

There are four types of design right protection in the UK and European Community: UK registered and unregistered design rights and Community registered and unregistered design rights.

UK unregistered design rights are governed by the Copyright, Designs and Patents Act 1988. They protect the shape and/or configuration (whether internal or external) of the whole or part of an article. They only protect 3D designs and last for up to 15 years.  They do not provide a monopoly right – they protect against unauthorised copying. To qualify for protection the article must be “original” (i.e. not copied) and “not commonplace”.

Those parts of an article which “must fit” or “must match” another article are not protected; nor are designs which constitute a “method or principle of construction”.

Articles infringe these rights if they are made “exactly or substantially” to the design. The defendant must know or have reason to believe that the article is an infringing article.

The rules relating to the remaining three rights are very similar, although UK registered designs are governed by the Registered Designs Act 1949; the Community rights are governed by the Community Design Regulation (EC/6/2002).  A registered design right can protect the appearance  of the whole or part of a product, subject to certain exceptions, for up to 25 years. Both 2D and 3D designs can be protected.  Community unregistered design rights provide automatic protection to designs which fall within the same definition, again subject to exceptions, for 3 years.

In each case, to qualify, the design must be “new” (not identical to any design previously made available to the public) and have “individual character” (the overall impression it creates on the informed user differs from the overall impression created by a design previously made available to the public).

The registered rights are infringed if a third party “uses” any design which does not produce a “different overall impression” on the informed user. They are monopoly rights – copying is not required; for Community unregistered rights to be infringed it is.

DKH Retail Ltd v H Young (Operations) Ltd [2014] EWHC 4034

DKH claimed UK unregistered design right and Community unregistered design in relation to(1) the front portion and hood of its “Academy” gilet sold under its SUPERDRY name and (2) the hood alone.  DKH alleged that H Young had infringed those rights by the importation and sale of its “Glaisdale” gilet sold under the ANIMAL brand name.

UK Unregistered Design

The judge confirmed that, in line with previous case law, a design must be both original and commonplace. Original meant “not copied”, but commonplace was a separate consideration. The judge followed the five stage test set out in Farmer’s Build (1999) for determining whether or not a design is “commonplace”.  In summary, the test is as follows:

  1. the design should be compared with the design of other articles in the same field;  
  2. the court must be satisfied that the design has not simply been copied from an earlier article, noting that even if it is very similar, it is not necessarily a copy -it may have been developed independently;  
  3. the court then has to decide whether it is commonplace by comparing it to similar articles in the same field of design;  
  4. the exercise must be conducted objectively, but in the end it is for the court and not for expert witnesses to decide; and  
  5. if there are aspects of the claimant’s design which are not found in any other design in the field in question, but which are found in the defendant’s design, the court would be entitled to conclude that design in question was not commonplace.

H Young advanced three arguments to show that the individual features of the designs, and their arrangement, were commonplace. The first was that some of the features in the pleaded list could serve a technical function and were therefore commonplace. The judge said (correctly) that this had no basis in law. The second was that some of the design features should be excluded from the design pleaded because of their insignificance to the article. The judge decided that this did not apply, on the facts.

The third was that it was not necessary to cite prior art displaying the arrangement of features of DKH’s designs if all of those features were shown individually to be commonplace, but the judge rejected this. The judge also noted that some of the evidence cited as “prior art” was too

The judge also noted that some of the evidence cited as “prior art” was too obscure to have been known to the notional designer at the relevant time.

H Young also argued that certain aspects of the designs were excluded from protection by virtue of the “must fit” and “method or principle of construction” exclusions:

Must Fit

This argument was limited to the zip fastening which connected the gilet and the hood. The judge found that the only features of shape or configuration of the zip which enabled part of the zip to be connected to, or placed in, around or against another part of the zip (or other article), allowing the zip (or other article) to perform its function, were the teeth of the zip. The design of the teeth were therefore excluded from protection. However, DKH did not claim any reliance on that part of the designs, so it was irrelevant.

Method/Principle of Construction

H Young submitted that features of the designs claimed by DKH were excluded because there was no limitation as to the shape of each of the features selected. Other than the design of the flap, collar or drawstrings having to be approximately rectangular in shape, sometimes with rounded corners, otherwise they could be any shape. Therefore, argued H Young, those claimed designs amounted to a method or principle of construction.

The judge said that the two designs claimed by DKH were those specifically embodied in the article specified in its claim, that is to say the Academy gilet. They could not be any shape. In his view none of the features of the designs constituted a method or a principle of construction. Both designs were held to be valid.

H Young only alleged secondary infringement. H Young admitted to having imported and sold the Glaisdale gilets since July 2012, and –late in the day –admitted that the  Glaisdale had been designed “by reference to” to the Acadamy gilet. The judge found that the Glaisdale had been made substantially to DKH’s designs, and that following receipt of DKH’s claim letter setting out the alleged infringement, H Young had the requisite knowledge that the Glaisdale was an infringing article. H Young was therefore liable.

Effect of the Intellectual Property Act 2014 (the “IP Act”)

The IP Act brought about a number of changes to design law in October 2014, for more information read our article here. One of the changes was to remove the words “any aspect of” from the definition of an unregistered design, which used to appear before the words “the shape or configuration (whether internal or external) of the whole or part of an article”. The judge in this case confirmed that, since the IP Act does not contain transitional provisions for this change, the DKH designs were to be construed according to the new, shorter definition (in other words, the change is retrospective).

Community Unregistered Design

Again, both designs were found to be valid: the designs were found to be new and to have individual character. H Young’s Glaisdale design would not, said the judge, produce on the informed user a different overall impression to that produced by DKH’s designs and H Young was therefore liable for secondary infringement. 

Procedural Point

It is also worth noting the judge’s comment in relation to both the UK and Community designs that, before the start of design right trials, the parties should agree a list –or at least submit separate lists –containing the relevant prior art. The point is to avoid disputes (such as the one that arose here) at the start of the trial regarding the prior art on which the defendant was entitled to rely.

Damages

As the successful claimant, DKH was entitled to claim damages. DKH also claimed “additional damages” (under Article 13(1) of Directive 2004/48/EC) on the grounds that H Young had deliberately attempted to infringe, and that until it was forced to admit copying, H Young had falsely maintained that the Glaisdale gilet had been designed independently. The judge refused to grant them, explaining that “I have no doubt anyway that this is not a case inwhich damages pursuant to art.13(1) should be awarded”.

Whitby Specialist Vehicles Ltd v Yorkshire Specialist Vehicles Ltd and Others

Whitby is the largest manufacturer of ice cream vans in the UK. In 2006 Whitby designed a new model ice cream van, known as the Whitby Mondial, based on a Mercedes Sprinter chassis. Whitby obtained a UK registered design for the front, rear and side views of the design.

Whitby also claimed UK unregistered design rights in 19 designs, which were grouped into three broad categories: the exterior of the Mondial, the interior of the Mondial and the base frame and the direct drive bracket.

Yorkshire manufactured the Millennium van. At trial the second and third defendants, who ran Yorkshire, admitted that they had copied parts of the Mondial to create their product. Whitby claimed that the defendants had infringed both its registered, and unregistered, design rights.

UK Registered Design

The judge held that the registered designs were new and had individual character, and were therefore valid. The judge did note, however, that since the designs did not depart greatly from ice cream van designs already available to the public, they had a relatively narrow scope of protection.

Turning to infringement, the judge concluded that the Millennium van did not produce a different overall impression on the informed user and that it therefore infringed the registered design.

UK Unregistered Design

The judge found that although some aspects of Whitby’s design were commonplace, others fell within "must fit" and "must match" exceptions and that there were differences between the Mondial and the Millennium, the defendants' van was made substantially to the design of Whitby’s design. Accordingly, Whitby's unregistered design rights had been infringed.

UK Registered Trade Mark Infringement

Whitby's drive shaft bore its WHITBY MORRISON trade mark. In copying the drive shaft, the Millennium also bore that mark. Making and selling drove shafts bearing that mark infringed s.10 (1) of the Trade Marks Act 1994.

The Fourth Defendant

The issue which occupied most of the court’s time was whether the Fourth Defendant (“D4”) was jointly liable. Although D4 denied copying, there was evidence that he had funded the purchase of a Mercedes van and that Whitby had converted it. There was also evidence that D4 knew how to fit fibreglass panels. The judge concluded that D4 was jointly liable for the other defendants’  infringements of the registered design, the unregistered  design rights and the trade mark since he funded the purchase and conversion of at least two vans, he participated in the copying and had sold at least one of the copy vans.

Credibility of the Defendants

Finally, the judge’s comments in relation to the credibility of the three individual defendants are noteworthy. He cast doubt upon the reliability of the first because, amongst other things, he had previously signed a witness statement which he knew to contain inaccuracies and had behaved dishonestly on an insurance matter. Turning to the second individual, the judge accepted DKH’s submission that he was covering up D4’s involvement. As to D4, much of his evidence was –said the judge –incredible or inconsistent. The judge did not think he was telling the truth about his involvement.

Conclusion

There has been concern, in the past, that design rights have little value since the courts often find a claimant’s designs to be valid, but not infringed. These cases should provide some comfort that the courts are prepared to enforce design rights.

The SUPERDRY case provided an opportunity for the judge to provide guidance on situations in which additional damages will be granted –unfortunately, the explanation given did little to expand upon the principle set out in statute.

The Whitby case also begs the question –why it was not held in the IPEC (where trials are limited to two days and costs are capped at £50,000 for the trial on liability and £25,000 for the account or inquiry)?

Perhaps the claimant did not wish to limit costs that it expected to recover from the defendants; perhaps the defendants did not know about the IPEC because for most of the litigation they were not represented by lawyers. If so, it is a lesson that although paying for lawyers is expensive, not paying for them can lead to further expense. Although D4 was represented at trial, this was only in relation to liability, not in relation to validity and infringement.

The First to Third Defendants were not represented at trial, and as the judge said, had “understandable difficulty in effectively presenting their cases on those issues”.

One final point to note is that, had the defendants carried out their activities after 1 October 2014, they may have been prosecuted under s.35ZA of the Registered Designs Act 2014 for deliberate copying of a registered design. It carries a maximum penalty of 10 years imprisonment, an unlimited fine or both.

You can access the full judgments here: