On 25 August 2017 in Neptune (Europe) Ltd v. Devol Kitchens Ltd [2017] EWHC 2172, Mr Justice Henry Carr sitting in the High Court dismissed the claim that the Defendant's modular kitchen range known as Shaker infringed the UK unregistered design right (UKUDR) which vested in the Claimant's Chichester kitchen (the Range). The Court also ruled that the Shaker range did not infringe Community Design No 793534 (CDR) relating to a drawer unit from the Range.

Managing UKUDR disputes

At the pre-trial review, the judge had narrowed down the issues of liability to be tried by ordering that, from the Range, each of the parties had to select three product designs. Accordingly, for the trial, the Claimant selected the door base cabinet, the two door straight glazed cabinet and the curved end cabinet whereas the Defendant chose the wine rack, the one drawer cabinet and the one door wall cabinet (collectively referred to as the Designs). Nevertheless, after the full hearing, the judge concluded that with hindsight he should have ordered that the parties had to limit their case to just one product design each.

Recent amendment to the law relating to UKUDR

UKUDR is a quasi-copyright right that vests generally in 'original' designs created by or for persons based in the UK and certain other countries.

Following its amendment by section 1 of the Intellectual Property Act 2014 (the IPA), section 213 of the Copyright, Designs and Patents Act 1988 (the CDPA) provides:

(1) Design right is a property right which subsists in accordance with this Part in an original design.

(2) In this Part 'design' means the design of the shape or configuration (whether internal or external) of the whole or part of an article.

Prior to the IPA which took effect on 1 October 2014, in section 213(2), the words "…any aspect of…" had been included before the phrase "… the shape or configuration…".

The judge held that the IPA did not affect accrued rights where claimants wish to claim infringement of acts taking place prior to 1 October 2014 in relation to "..any aspect of.." of the shape or configuration of the article. However, the IPA does serve to extinguish any acts committed after 1 October 2014 which relate to any aspect of an article's design. The judge held that the IPA was not just declaratory of the existing law but was instead "…a substantive change to the law by preventing claims in respect of disembodied features, arbitrarily selected, which are not, in design terms, parts of the design..."

Section 213(3) and (4) of the CDPA places limitations on what can be a protectable design under UKUDR.

(3) Design right does not subsist in:

(b) features of shape or configuration of an article which –

(i) enable the article to be connected to, or placed in, around or against, another article so that either article may perform its function, or

(ii) are dependent upon the appearance of another article of which the article is intended by the designer to form an integral part; or

(c) surface decoration.

(4) A design is not 'original' for the purposes of this Part if it is commonplace [emphasis added] [in a qualifying country] in the design field in question at the time of its creation.

The Claimant's cabinet in the Range contained cock-beading and moulding whereas the Defendant's product design did not contain such a feature. The judge held that, as the cock-beading and moulding were three dimensional, they could not be regarded as 'surface decoration' for the purpose of section 213(3)(c).

Conversely, the judge rejected the submission by the Defendant that, by excluding the cock-beading and other features from the analysis of whether the Shaker range infringed the UKUDR vested in the Range, the Claimant was relying upon the "…aspect of..." a design in order to bring its suit and thus this had been removed from protection by the IPA. The judge held that such features as cock-beading etc. were by their nature 'parts' – not "… aspects of ..." a design and it is possible to have UKUDR vest in part of a product as well as in an entire product.

Infringement of UKUDR is determined by the exclusivity granted under the right. Thus section 226 of the CDPA provides that:

(1) The owner of a design right in a design has the exclusive right to reproduce the design for commercial purposes –

(a) by making articles to that design, or

(b) by making a design document recording the design for the purpose of enabling such articles to be made.

(2) Reproduction of a design by making articles to the design means copying the design so as to produce articles exactly or substantially to that design and references in this Part to making articles to a design shall be construed accordingly…"

(3) Design right is infringed by a person who without the licence of the design right owner does, or authorises another to do, anything which by virtue of this section is the exclusive right of the design right owner…"

Significantly, the Claimant relied upon the entirety of the Designs, bar the cock-beading and moulding and some other less significant features. Referring to the Court of Appeal's decision in Wooley Jewellers Ltd v A&A Jewellery Ltd (No.1) [2002] EWCA Civ 1119 at paragraph 19, the judge rejected the submission by counsel for the Claimant that, as with copyright, if it can be proved whether on a qualitative or quantitative basis that a substantial part of the earlier design has been reproduced, then a finding of infringement will have been established, especially as here when the claimant relies upon the entirety of each of the product designs and not just a part or combination of features (other than to the extent that it seeks to exclude certain features).

Section 226(2) requires that the defendant's products look identical or substantially similar to that of the protected design. As such the UK law on UKUDR lies close to the test for assessing whether Community unregistered designs are infringed i.e. whether the defendant's design produces on the informed user a different overall impression from that of the claimant's design – article 10(1) of the Community Design Regulation No. 6/2002. Accordingly, the judge held that as the Claimant had not pleaded design in a part of the product, it was necessary to consider the differences as well as the similarities between the respective product designs.

Designers stand on the shoulders of those who have gone before them. Overall, the Court accepted that the Defendant's Shaker range was based one of the Defendant's earlier designs, known as the Classic range. However, the judge also accepted that the Shaker range was influenced by and owed something to the Defendant's knowledge of the Range.

The Shaker range contained some features which were unusual in kitchen furniture which would not have been the case if the Shaker range had been designed wholly independently of the Range. Nevertheless, the conclusion throughout was that either the features in the Shaker range pleaded by the Claimant were copied from the Classic range or else they were not made substantially to the design of the Chichester products making up the Range.

Helpful guidance

In this decision, the judge has built upon the useful guidance he gave previously in Spin Master Ltd v PMS International Group [2017] EWHC 1477 about how to assess and conduct UKUDR and CDR disputes.

Early identification of alleged copying

Prior to the trial, the Claimant had alleged that one of the features copied from the Range, was that of adjustable rear feet. Initially, the Claimant had averred that the Classic range did not have such a feature, but when this assertion was countered by the Defendant's witness statements, the allegation had been abandoned and not put such to any of the Defendant's witnesses.

Nevertheless, in his closing at trial, Counsel for the Claimant had chosen for the first time to allege that the adjustable rear feet in the Classic range were themselves copied from the Range. Counsel also alleged that the onus was on the Defendant to submit evidence to prove that the Classic range was not copied from the Range.

The judge held that such a late allegation of copying was unfair and would be rejected on the basis that it should have been identified far sooner, citing Lambretta Clothing Co Ltd v Teddy Smith (UK) Ltd [2004] EWCA Civ 886. Moreover, the Defendant did not have to rebut such an allegation about the Classic range.

Method or principle of construction

Following the Court of Appeal in Landor & Hawa International Ltd v. Azure Designs Ltd [2007] FSR 9, the judge held that "The more generalised and abstract the feature relied upon, the more likely it is that it be regarded as a method or principle of construction…", and thus such a feature would be excluded from UKUDR protection by section 213(3)(a) CDPA, see above. In other words, if it is possible to get several different appearances which all embody the general features claimed, this would tend to amount to a method or principle of construction. Equally, even though "configuration" has a wider meaning than "shape" (see section 213(1) CDPA), in that it allows for claims in respect of the arrangement of parts or elements of an article, there are limits to the extent of abstraction.

An aspect of the Claimant's case reveals the application of this rule. For example, the Shaker cabinet contained four interior columns with a saw tooth profile and trapezoidal inserts. Although experts from both parties gave evidence that they had not seen saw tooth shelving in new kitchen furniture and the Court found that the Defendant had been inspired by the Range to use such, the judge held that the respective physical manifestations of this respective feature is different as between the Range and the Shaker kitchen units. As such, "…The idea of using such a method [saw tooth] cannot be protected by unregistered design. A definition of this design feature which encompasses both the Chichester and Shaker would amount to a method or principle of construction…"

Originality when making changes to an existing design

UKUDR lasts for a relatively short period: ten years from the date of first marketing or, if shorter, fifteen years from the date when the design was first recorded. During cross examination, the MD for the Claimant accepted that the Chichester two door glazed cabinet with its straight top was a modification to an earlier design within the Range that had had an arched top. The Defendant's cabinet had a straight top and the Court held that the modification from arched tops to straight tops in the glazing did not give rise to any new UKUDR in the overall design as a whole. Accordingly, the Claimant's right of protection against which the Defendant's design would be assessed, ran from the date of the earlier design, not the design as originally pleaded.

The CDR claim

It is not necessary to prove copying for a claimant to succeed in an allegation of CDR infringement. The Court held that the interesting and unusual cutaway shape of the cabinet's drawer units gave the CDR 'individual character' so it survived the counterclaim by the Defendant that it was invalid. However, because the Shaker drawer unit created a different overall impression to that of the CDR, it did not infringe.

Appropriate use of the  shorter trials scheme (STS)

A few years ago, the Rolls Building section of the High Court opened and thus brought under one roof the Chancery Division (which includes the Patents Court), the Commercial and Admiralty Court and the Technology and Construction Court. Throughout, the judges in the Rolls Building have been engaged and innovative and in such a spirit, on 1 October 2015 a pilot scheme was introduced under Civil Procedures Rules 51N (the Practice Direction). The pilot is due to run until at least 30 September 2018 and is aimed at syphoning off those straightforward disputes that do not require extensive disclosure, witness or expert evidence – thus reducing costs and speeding up proceedings.

The key features and inherent advantages of the STS, include:

  • restrictions on the time periods for service of pleadings and limits on their length
  • the claimant must aim to fix the case management conference (CMC) within 12 weeks after the acknowledgment of service
  • the parties do not need to carry out the time consuming Precedent H cost budgeting exercise prior to the CMC
  • disclosure is significantly reduced and is limited to documents relied upon and documents specifically requested by the other party
  • the scope and length of expert and witness evidence is restricted and where oral expert evidence is required, it will be limited to identified issues
  • there are actively engaged assigned i.e. docketed judges for each case
  • trials must last no longer than four days and judgments will be handed down within 6 weeks of trial
  • last but by no means least, the costs to be paid by the parties are assessed after the hearing when the judgment is handed down or else shortly thereafter.

The proceedings began in 2015 and thus the trial in this case took place well after the target date envisaged by the Practice Direction. The Practice Direction expressly states that the STS is unsuitable for cases which include allegations of dishonesty (as was indeed raised in this case by the Claimant); that involve multiple issues; and/or that require extensive disclosure or extensive witness/expert evidence. Nevertheless, although the hearing eventually fell within the four day limit, the Claimant had been pursuing a claim for copyright infringement up to trial and into trial it had continued to allege that the Defendant was lying about whether it had copied the Chichester range. With hindsight, the case should perhaps have not have been conducted under the STS.