In June 2008 the High Court considered both unregistered and registered design rights in an infringement case raised by a lawnmower designer, Rolawn Limited/Rolawn Turf Growers Limited v Turfnech Machinery Limited(1). The case reaffirms section 213 of the Copyright, Designs and Patents Act 1988 and considers the scope of unregistered design rights in their application.

A design is: "the design of any aspect of the shape or configuration (whether internal or external) of the whole or part of an article."

Rolawn Limited/Rolawn Turf Growers Limited (R) had designed and manufactured a wide area lawnmower for its own use and subsequently registered a design under the Registered Designs Act 1949. At a later date Turfnech Machinery Limited (T) manufactured and sold two wide area mowers similar in design to that of R. Whilst T had seen publicity photographs of R's mower, the original mower had not been made available for purchase or inspection. R claimed that T's design infringed its unregistered and registered design rights. T denied copying and counterclaimed that:

  1. "Elements of R's design were excluded from unregistered design right protection as they were common place or methods/principals of construction"; and
  2. The registered design lacked individual character and was therefore invalid.

The High Court dismissed both the claims and the counterclaims. In relation to the unregistered design right the Court held: 

  1. That unregistered design rights are confined to what one can actually see in an article and therefore R could not claim design rights in an underlying design concept. The Court therefore rejected R's claims to protection for the concept of a folding arm on the mower;
  2. That the design was not commonplace as there was nothing in the design field that resembled R's mower in the particular configurations in which the design rights were claimed;
  3. That although the exclusion from protection of designs which result merely as a method or principle of construction did not apply to the particular design of R's mower, it did provide a further bar to R's claim to a generalised design right which was, in essence, a method of constructing a wide area mower; and
  4. That the design had not been copied and therefore could not benefit from unregistered design protection. It was noted that not all of the design's key features could be deduced from the photographs and that R had relied on general similarities. Although T had copied certain ideas the other alleged similarities flowed naturally without copying. The Court was of the opinion that what had been copied amounted to methods of construction. There was no evidence of explicit copying of the design itself, more just a copying of general ideas. The design wasn't copied, the methods and principles of construction were copied, and such matters are excluded from being design rights as it is not possible to claim design rights in abstract ideas and concepts.

Regarding the registered design right, it was held that the design itself was valid, as the mower created a different overall impression to the prior art. A registered design must be novel (i.e. an identical design must not have been disclosed to the public. There are two exemptions to this restriction on disclosure: (1) an exemption for disclosures which could not reasonably have become known in the normal course of business; and (2) a grace period for designers which allows disclosure for marketing for 12 months prior to registration. A registered design must also be of an individual character, i.e. the informed user must ascertain a different overall impression to earlier designs. The Court held that such a different overall impression was created by R's design and therefore the design was valid. However it was held that T's design also created a different overall impression in the eyes of the informed user, and therefore it did not infringe R's registered design.

Registering a design right with the United Kingdom Intellectual Property Office is safer than relying on unregistered design rights as it gives the creator an extra layer of legal protection. Provided the design meets the criteria above, a registered design gives the holder a 25-year monopoly right over the appearance of the whole or part of its design. The holder also has the exclusive right to use and recreate any item incorporating his or her design, and perhaps most importantly it allows the holder to take legal redress against anyone infringing the right, whether intentionally or not.

The decision highlights the key principals of unregistered and registered designs and in particular the requirement for copying to take place for an unregistered design to be infringed. In a similar manner to copyright, unregistered design rights are not a monopoly right. Without the requisite evidence of copying, the complainer is required to demonstrate that presumption of copying can be made due to the presence of opportunities to copy similarities between designs. One particular difficulty in this regard in the case between R and T was that the article embodying the design was kept for private use and therefore any copying would have to have been undertaken on the basis of photographs. Importantly the case repeats the point that a design right can be claimed in an overall piece of design work that contains a number of commonplace elements, but it does not follow automatically that the design is commonplace merely because its constituent parts are.

On a separate note, the judgment also illustrates that unregistered design rights subsist in the physical manifestation of the design rather than any abstract design idea. Mann J confirmed this in stating that an unregistered design right was confined to what one could see in an article, either physically or through a drawing.

(1) [2008] EWHC 989 (Pat)