In Pro-Tec Covers Ltd v Specialised Covers Ltd  EWPCC 23, Richard Meade QC, sitting in the Patents County Court, has provided a detailed judgment on an unregistered design right infringement dispute, in which Pro-Tec had alleged that Specialised had undertaken “a concerted campaign of copying by at least four people, followed by a concerted campaign of lying about it and covering it up”. Although the judge could see why the circumstances of this matter could have given rise to suspicions of copying by Specialised, the evidence led to the opposite conclusion.
Pro-Tec designed and sold covers to protect the front face of caravans from dirt and debris whilst being towed (towing covers). Historically, towing covers consisted of a single sheet of fabric along with straps that would attach to the awning rail of the caravan. A problem with this historic design was that multiple straps needed to be attached to the awning rail. In 2009, Pro-Tec came up with an improvement. Rather than have multiple straps that had to be attached directly from the towing cover to the awning rail, one could have a separate fabric strip (strap strip) which in essence was a fabric-covered pole with straps that fitted into the awning rail (see figure 1). The strap strip would co-operate with the main part of the cover by means of the straps (see figure 2). This was said to make fitting the towing cover easier.
Click here to view figures 1 and 2
Specialised Covers Ltd also sold caravan covers, but prior to the action did not deal in towing covers. In January 2010, Specialised started work on designing towing covers. Around the same time, Mr Lord, an ex-employee of Pro-Tec, started working as a salesman for Specialised. Mr Lord was said by Pro-Tec to have experience of their design for the strap strip. When Specialised later produced its own strap strip, Pro-Tec alleged that Mr Lord was specifically hired to facilitate the copying of Pro-Tec’s design, and Specialised’s resultant strap strip infringed Pro-Tec’s unregistered design right.
Specialised denied these allegations, stating that Mr Lord was hired for his sales ability and that they had no need to copy as they were already skilled in designing caravan covers in general.
The Question of Copying
Due to the serious nature of the allegation made by Pro-Tec, “a concerted campaign of copying by at least four people, followed by a concerted campaign of lying about it and covering it up”, the judge applied the principle in Re H Minors  AC 563 that the seriousness of the allegations was an important factor in assessing the balance of probabilities.
On assessing the evidence, the judge found that it was not compelling enough to allow him to accept such an allegation and outlined several ways in which it was flawed:
- If Specialised wanted to copy Pro-Tec’s design, it would have just bought the product instead of going through the trouble of hiring Mr Lord.
- Towing protectors were not big business.
- Specialised clearly had the skills and experience to capably design their own product.
- It was unlikely to put the alleged level of copying into an improvement as minor as the strap strip.
- Specialised had gone through three variant designs to arrive at the strap strip, a process they wouldn’t have needed if their original intention was to directly copy Pro-Tec’s design.
- The evidence did not point to Specialised knowing about Pro- Tec’s strap strip when they hired Mr Lord.
Ultimately the judge found that Specialised conceived of the general idea of a strap strip for the first time independently of Pro-Tec and that any similarities between Pro-Tec’s product and Specialised’s product were explained by their having “broadly the same design logic”.
The Statutory Exclusions
Although not strictly necessary in view of his finding that there was no copying, Mr Meade QC considered whether any of the features relied on by Pro-Tec were excluded from protection under the “must fit” or “method or principle of construction” exclusions. He found that some were, but not all.
Notably the judge found that the case law on the “must fit” exclusion was “directed primarily if not exclusively at interfaces” and, as such, only that part of the strap strip that slotted into the awning rail would have been excluded. Indeed the strap strip as a whole was not a “must fit” feature as there were a number of ways the cover could be held in place.