An Englishman’s home is his castle, with the kitchen the modern day jewel in the crown. The case of Neptune v Devol Kitchens [2017] EWHC 2172 (Pat) demonstrates the lengths that competitors will go to in order to enforce their perceived USPs in a competitive marketplace.

Both parties designed and sold kitchens. Neptune alleged that deVOL’s ‘Shaker’ range copied its ‘Chichester’ range. Neptune had sold Chichester kitchens since 2006, with deVOL also selling them under an agreement from 2008 – 2010 before selling the Shaker in 2010. DeVOL denied any infringement and attributed the Shaker’s design to its earlier ‘Classic’ range. Neptune did not allege that the Classic copied the Chichester in its pleadings.

Neptune relied upon a Registered Community Design (RCD) and UK unregistered design rights (UKUDR). The UKUDR discussion is the interesting angle here.

The benefit of a UKUDR claim is that the claimant can define what elements of its design have been infringed after it has seen the alleged infringing design. This is in contrast to an RCD, where a claimant defines its rights at the time of filing its RCD application. Infringement of a UKUDR can therefore be a very flexible cause of action, offering a would-be claimant an element of surprise against a potential defendant.

To make out a successful claim for infringement of a UKUDR, a claimant must prove both that copying has taken place and that articles produced were identical or substantially the same as their design. This is distinct from copyright, where a party has to show that a substantial part has been copied, a quantitative and qualitative test. Interestingly, Neptune claimed rights in the whole designs of several cabinets. This is significant because it meant that in order for deVOL to infringe, it would have to be shown that they had copied the whole design and not just a specific part e.g. the cabinet doors.

Neptune identified several key features within the whole designs, which it sought to amplify deVOL’s copying. Neptune also looked to exclude features of the Chichester that did not appear in the Shaker. DeVOL objected to this based on an amendment to s.213(2) of the Copyright Designs and Patents Act 1988 (‘CDPA 1988’) (effective 1 October 2014), which removed “any aspect of” from the definition of a design:

“design” means the design of any aspect of the shape or configuration…of the whole or part of an article.

DeVOL claimed that stripping out the Chichester’s features would allow Neptune to rely on abstract elements, classifiable as “any aspect of”. A finding in deVOL’s favour would have impacted on what designs were being looked at when doing a side-by-side comparison to determine if copying had taken place. Fortunately for Neptune, after some discussion over the distinction between ‘parts’ and ‘aspects’, the judge allowed Neptune to exclude the elements. The judge also found that the amendment was not retrospective i.e. deVOL would be liable up to 1 October 2014. So far, so good for Neptune…

Having defined the designs, the Court considered the infringement of each one in turn. The CDPA 1988 excludes a number of things from protection under UKUDR, including mere ideas, commonplace designs and methods/principles of construction. Ultimately, Neptune lost its UKUDR claim on the basis that there was either no copying generally, or because the Shaker range took its inspiration from deVOL’s own Classic range, or because the Chichester’s features that were copied were methods/principles of construction or mere ideas in which Neptune could not claim exclusive rights. The judge also rejected a claim by Neptune’s counsel in their closing submissions that the Classic range copied the Chichester range; it was inappropriate to put this allegation to deVOL for the first time at the end of trial.

The judge then considered Neptune’s claim under its RCD together with deVOL’s counterclaim to cancel the RCD on the basis that it didn’t have any individual character (a prerequisite for registration). The judge found that the RCD was for a typical kitchen drawer unit, with the only individual character resting in the curved cutaways of the side profile of the front legs. This was a curse and a blessing for Neptune: on the one hand, the curved cutaways saved the RCD from cancellation; on the other, the cutaways on the Shaker units were significantly different, meaning that there was no infringement. Generally speaking, a novel feature such as the cut-out would warrant protecting as a separate RCD.

The case proceeded under the Shorter Trial Scheme (STS), a middle ground between the Intellectual Property Enterprise Court and standard High Court. The STS adopts a streamlined evidential process and strict timetable so that cases are heard quicker. Despite its shorter nature, the STS seems well-equipped to deal with complex IP issues efficiently.

This case provides some useful clarification on some newer legislation and illustrates the benefits of having both registered and unregistered design rights to rely upon. Indeed, last year’s reduction in the filing costs for UK registered designs makes them very good value. When filing for registered design protection and drafting pleadings outlining an unregistered design, it is important to make sure that the individual features are carefully defined.