UK unregistered design rights are an important commercial asset and can provide effective and valuable protection in many business sectors. This has been illustrated over the past year with our client Kohler Mira successfully enforcing design rights.
Registered designs applied for at the UK Intellectual Property Office (UKIPO) are effective in the UK whilst Community registered designs (RCDs) are enforceable in all European Union countries. UK and Community registered designs can be renewed for up to twenty-five years.
A lesser known right is unregistered design right (UDR). This right comes into existence automatically and protects any aspect of the shape and configuration of an article or a part of an article. The shape and configuration protected may be any part of the article, whether internal or external.
A recent series of decisions about the infringement of the UK unregistered design right of Kohler Mira’s electric shower has reinforced the value of this type of design rights to IP owners. This case is a good example of how far the courts are prepared to go to protect UDRs and demonstrates that UDRs can be successfully enforced even when there is no proven infringement of registered design rights.
In the case in question, Kohler Mira Ltd v Bristan Group Ltd  EWPCC 2, Kohler Mira Limited filed a claim for infringement of two Registered Community Designs (RCDs) and three UK unregistered design rights subsisting in an electric shower unit. Both of Kohler Mira’s Community design registrations were held to be valid but not infringed by Bristan’s products. However, Bristan was held to have infringed Kohler Mira’s UK UDRs in the electric shower unit.
Bristan’s alleged infringing products had some features in common with the RCDs; however it was found that they lacked the features that, in the judge’s view, contributed most to the individual character of the RCDs. Thus the judge found that the RCDs gave a different overall impression and were not infringed by Bristan’s shower unit products.
A UDR is infringed when a third party copies the design so as to produce articles exactly or substantially to that design. In order to enforce UDR it is necessary to show that the design is original, i.e. that the shape and configuration of the protected product is not the same as any products that have been publicised before the design was created. It is also necessary to establish that the UDR has been copied. This seems onerous but the courts take a pragmatic view that if the similarities are marked then it is reasonable to assume that copying has taken place unless the defendant can establish independent design of its article. The greater the similarities, the stronger the evidence for independent design that is required.
Bristan provided evidence of an independent design process in respect of the designer himself. However, although it was accepted that the designer was unaware of Kohler Mira’s products the judge ruled that senior personnel at Bristan were aware of the products and had guided the design process and choices to effectively copy the striking elements of Kohler Mira’s designs. As Bristan was unable to explain satisfactorily the similarities between its products and Kohler Mira’s design, the judge found that the elements which made the Kohler Mira designs striking and unusual were also the elements copied in the Bristan designs. Therefore Bristan was held to have infringed Mira’s unregistered design rights.
In a subsequent hearing, in Kohler Mira Ltd v Bristan Group Ltd  EWPCC 5, Kohler Mira sought an order for dissemination of the main judgment, i.e. an order that Bristan should publish advertisements referring to the finding of infringement. However, the order for dissemination was refused, because it was decided that such advertisements could contribute to public confusion, rather than dispel it, due to the partial nature of Kohler Mira’s victory.
Following the main judgment. where Kohler Mira was entitled to damages in respect of the infringement of the UK UDR, and in the absence of an acceptable offer of settlement, the parties were back in court for the damages enquiry, in Kohler Mira Ltd v Bristan Group Ltd  EWHC 1931 (IPEC). In this enquiry relating to damages, Kohler Mira secured a damages award of over £220,000, plus interest and costs. This is one of the highest awards in the IPEC since procedural reforms were introduced in 2010.
Bristan put forward an unsuccessful defence that it had copied the Kohler Mira products unknowingly and also argued that it had in fact made a loss on these products. The judge dismissed these submissions, which Bristan only raised for the first time in this enquiry to damages hearing. As a result the judge awarded damages equivalent to a royalty payment at a rate of 6.7% of the price at which Bristan sold the infringing shower units to its customers.
While the court stressed that each damages assessment will depend on its facts, this case does set out a useful summary of the principles applicable to calculating damages for UDR infringement and highlighted some of the factors to be taken into account when approaching the notoriously difficult exercise of calculating damages.
These decisions also show that a successful case for UK UDR infringement can be constructed based on knowledge of an alleged infringing product. They also serve as a reminder to parties considering infringement actions that rather than relying on design registrations alone consideration should be given to pursuing multiple claims for infringement side-by-side, that is claims of infringement in relation to both the registered and unregistered design rights.
The damages recovered in this case illustrate that the UK courts do take design infringement seriously and that the right can be successfully enforced in the UK courts, hopefully serving as a deterrent to others who might wish to try to piggyback on a successful design.