ACTION STORAGE SYSTEMS LIMITED V G-FORCE EUROPE.COM LIMITED AND FLETCHER EUROPEAN CONTAINERS LIMITED [2016] EWHC 3151 (IPEC)
This case relates to the alleged infringement of the Claimant’s UK unregistered design rights in its school lockers called “eXtreme lockers”.
The First Defendant was established in 2013. The Second Defendant was established in 1994. Its principal business is the manufacture of moulded plastic containers which it sells largely to the food industry. The Defendants share the same sole director and operate from adjacent premises in Northamptonshire.
In 2013 the Defendants launched a new range of lockers sold under the name ‘SuperTuff’. The Claimant alleged that the design of the SuperTuff lockers was created by copying that of the eXtreme lockers and that the Defendants had infringed the Claimant’s UK unregistered design rights in the design of the eXtreme lockers as a whole, and also in the designs of parts of the lockers.
The Defendants denied that their SuperTuff lockers are articles made either exactly or substantially to the design of the eXtreme lockers. They also advanced a number of grounds for lack of design rights in the eXtreme locker.
Below is a comparison of the Claimant and Defendants’ lockers, along with the prior art;
UK unregistered designs protect the shape or configuration of the whole or part of a product. Protection lasts for a maximum of 15 years from the end of the calendar year in which the design was first recorded in a design document or an article was first made to the design, whichever occurred first. If articles made to the design are put on sale within the first five years of that term, then the design right lasts for only 10 years from the date of first sale. UK unregistered design rights do not protect surface decoration; unlike Community unregistered design rights and UK registered designs.
It is worth noting that on 1 October 2014 the words "any aspect of" were deleted from the definition of a design. The original definition with these words deleted can be seen below:
“(2) In this Part ‘design’ means the design of any aspect of the shape or configuration (whether internal or external) of the whole or part of an article.”
In the DKH Retail case, Judge Hacon said the deletion of these words had the effect of no longer permitting a claim to unregistered design right which extends other than to a design specifically embodied in an article or part of an article, i.e. no more unregistered design right in abstract designs which could be intellectually constituted from a combination of elements of a design but which are not in fact the actual design or part of the actual design of the Claimant. However, Hacon said this issue need not be considered much further as the Claimant had pleaded that it relied on its UK unregistered designs as embodied in the eXtreme lockers.
The first question to be considered was: is the design original? The Claimant accepted that they had used a third party locker, the Remcon locker as the starting point for the design. However, it was found that the Claimant had made substantial changes to the Remcon design, including to the vents, label indentation, position of the lock and the removal of the handle. Hacon noted that the Defendants’ allegation that the design of the whole locker lacked originality "did not get off to a flying start" as they had admitted that five features of the locker were original. In the event, Hacon found the design was original.
The Defendants only identified one earlier design, which was the Remcon locker, as both prior art and to argue that the eXtreme locker design was commonplace. Therefore, they had to prove that the Remcon design was commonplace prior to when the Claimant’s design was created in 2005. In this case, the Judge found that the Defendants' expert had failed to provide any basis for the Remcon design being commonplace. Accordingly the Defendants were unsuccessful on proving the Claimant’s design was commonplace.
The Defendants’ next line of attack was that certain design features constituted a method or principle of construction and were therefore excluded from attracting UK unregistered design protection. A method or principle of construction is a process or operation by which a shape is produced, as opposed to the shape itself. What the proprietor gets in design protection is a monopoly for one particular individual and specific appearance only.
The Defendants in this case argued that two features of the eXtreme locker were each a method or principle of construction.
(i) The tapered ribs on the side of the locker; and
(ii) The shape of the rear panel of the locker, having a continuous border around the edge with inset squares having rounded corners at each of the four corners of the panel.
Hacon said there was no evidence that the tapered ribs on the side of the locker or the shape of the rear of the locker could be achieved only by means of the particular shape of those features embodied in the eXtreme locker. Consequently, neither of the design features targeted was a method or principle of construction.
The Defendants then attacked parts of the Claimant’s design on the basis that they are excluded from protection due to “must fit” exclusion. It excludes from design right protection any otherwise protectable design features which enable the whole or part of a product to be connected to something else in order to perform a function. The original purpose of this exclusion was to prevent design owners from preventing the sale of spare parts. Even if a feature performs two functions (e.g. it interfaces with another product and is aesthetically pleasing), that feature is still excluded from design right protection.
The disputed lockers were designed to be stacked. The Defendants therefore argued that the top and bottom panels were excluded from design right protection. Hacon considered that there was sufficient precision in the "fit" for this exclusion to apply. This did not render the design invalid but simply meant that the top and bottom panels were not considered as part of the design.
The Judge then turned to the issue of infringement. The Claimant alleged both primary and secondary infringement. The Defendants’ acts of making, possessing, offering for sale and selling SuperTuff lockers were admitted.
To establish primary infringement the Claimant had to show that:
(1) Copying had occurred; and
(2) The alleged infringing articles were made exactly or substantially to the Claimant's design.
Secondary infringement requires knowledge or reason to believe that the lockers were infringing.
Hacon set out his approach which was essentially that if no copying was identified, then it the Claimant would be unsuccessful on infringement. However, once copying is found, the Claimant has to navigate further obstacles such as features which are not protected and must, therefore, be disregarded.
The top and bottom panels were not considered as part of the design due to the must fit exclusion previously discussed. Nevertheless, on analysis of the various features, Hacon concluded that primary infringement had occurred in respect of the UK unregistered designs in eXtreme locker’s dimensions and proportions, its label indentation, the shape of its sides and its rear. It should be noted that the UK unregistered design right in the door was found not to infringe due to the difference in the vents and indents.
Secondary infringement was admitted after receipt of the Claimant's cease and desist letter in June 2014 but the Defendants attempted to argue that prior to that date, the Defendants believed the Claimant's lockers to have copied the Remcon and consequently did not benefit from design right protection in the eXtreme lockers. Although the judge accepted that this view was honestly held, it was not sufficient to avoid secondary infringement because the Defendants knew all of the relevant facts and applying them incorrectly did not mean they could avoid secondary infringement.
Finally, Judge Hacon devoted the final five paragraphs of the judgment to the importance of using design charts when litigating designs in the IPEC. Hacon noted that design charts can help to clarify issues in dispute and greatly assist the court and both parties should engage with the charts as much as possible. The Claimant’s barrister came in for particular praise for her "extremely useful" charts listing the significant features.
Judge Hacon’s clear preference for future UK UDR claims in the IPEC is as follows:
(i) All significant features of the design are set out in the Particulars of Claim together with the extent to which those features appear in a defendant's product;
(ii) The defendant should either accept this list of features or propose amendments to it; and
(iii) The defendant should admit or deny the presence of significant design features in its products.
This case is particularly useful for understanding what the IPEC will expect from parties in organising future design litigation.
Judgement Date: 07 DECEMBER 2016
Guidance for bringing unregistered design claims in IPEC cases