For a country which prides itself on the skill and sophistication of its designers, the UK’s design protection laws are surprisingly inelegant and complex. Designs may be protected here by EU and UK versions of both registered and unregistered design rights regimes, as well as trade marks, passing off and occasionally copyright law. Most design disputes settle and a recent case between two competing kitchen cabinet manufacturers, Devol and Neptune, perhaps illustrates why. After a useful tour of aspects of (largely) UK unregistered design right law, the claimant lost on all infringement allegations.

The background facts

Neptune and Devol are both long established high-end kitchen design companies, The case related to Neptune’s “Chichester” range of kitchens and Devol’s later “Shaker” range, which Neptune claimed had been copied in various respects from the Chichester range. Several years ago Devol had acted as a reseller of Neptune’s Chichester but the arrangement came to an end after a couple of years and thereafter Devol developed Shaker.

As the judge noted, from looking at many images of kitchens dating both before and after those in question it was apparent that “kitchens in the same or similar styles can look like each other without being copies”.

Neptune sued and relied upon a number of UK unregistered design rights (which last up to 15 years, considerably longer than the EU version which is limited to three years) and upon an EU registered design. The case largely related to the unregistered design right. In addition at an earlier stage some copyright claims had been advanced but those were abandoned during the trial.

Unregistered design right analysis

The Court held that all of the unregistered design right claims failed.

Significant weight was given to evidence as to how the allegedly infringing designs came about. The Court held that although there was some awareness of the Claimant’s Chichester range, the design features in question were instead derived from earlier Devol designs. The Judge did find that certain elements, namely the use of a type of shelving in the Shaker range, did come from the Chichester range. However the idea was not new or original to the Chichester range and the physical manifestation in the Shaker range was different. The idea of using such a method could not be protected by unregistered design right.

The Judge also resisted an attempt to “evergreen” one aspect of the design by claiming that modifications to it extended its term of protection. The changes were too insignificant. Nor, he held, would it be enough to show that key features had been copied if those had not been pleaded as a design right. In a couple of areas he held that the designs created a different overall impression and so did not infringe, looking at not only the similarities but also the differences. He also reiterated that the protection does not apply to common place ideas.

Degrees of abstraction?

This case is one of the first to review changes to UK unregistered design law introduced in 2014. One of those changes was to delete “any aspect of” from the definition of the design used in statute which had read:

“design” means the design of any aspect of the shape or configuration (whether internal or external) of the whole or part of an article”.

Following some recent cases, the Court here agreed that the significance of this change was that UK unregistered design right could no longer subsist in abstract designs. It does not extend to the protection of ideas nor to methods or principles of construction. While the right extends to “configuration”, a rights-owner cannot use a general claim in order to get protection for quite abstract ideas which may manifest themselves as a configuration. The Judge dismissed an attempt by Neptune to use a copyright-like approach to infringement and that reproducing a substantial part amounted to infringement. Regard had to be had to the overall design.

Do the 2014 statutory changes have retrospective effect?

The allegedly infringing designs had all been developed before 2014, though sales had continued afterwards. Was the change of law retrospective? The Judge held that it was not in the absence of clear wording in the statute saying that it should and so any accrued causes of action arising before the statutory change would continue. However, acts taking place after the statutory change should be looked at under the amended law.

Community design right

The EU registered design right case also failed, though the registration was not declared invalid, as Devol had argued. The Judge compared the registration with the alleged infringement from the perspective of the informed user, namely a well-informed customer or a kitchen installer. Where features were common to the overall design corpus for that sort of work he afforded minor importance to such similarities but took greater notice of similarities which were outside the design corpus. Here the alleged infringement created a different overall impression and did not infringe.

Lessons for other cases

UK unregistered design right can be a useful right, as it is cheap and relatively easy to acquire. However, as this case illustrates, its enforcement can be hazardous and costly. Despite the case being heard under the Court’s Shorter Trials Scheme designed to encourage the efficient and cheap hearing of simple cases, numerous aspects of the Neptune designs were pleaded with potentially lengthy evidence. With the loss of enforceable EU rights in the UK upon Brexit, the importance of rights such as the UK unregistered design right will increase and this case will give some pause for thought to designers who hope that after Brexit their rights will be as easy to protect.

Registered design cases are less common still and the lesson from this case is that those rights too can be difficult to enforce, especially where the design corpus is likely to be broad.

Case Ref: [2017] EWHC 2172