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England and Wales Court of Appeal (Civil Division) Decisions
You are here: BAILII >> Databases >> England and Wales Court of Appeal (Civil Division) Decisions >> A Fulton Company Ltd. v Grant Barnett & Company Ltd. [2000] EWCA Civ 513 (05 October 2000)
URL: http://www.bailii.org/ew/cases/EWCA/Civ/2000/513.html
Cite as: [2001] RPC 16, [2000] EWCA Civ 513
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CHANCERY DIVISION
B e f o r e :
____________________
| A. FULTON COMPANY LIMITED | ||
| (Claimant) | ||
| -v- | ||
| GRANT BARNETT & COMPANY LIMITED | ||
| (Defendant) |
____________________
Dr Heather Lawrence instructed for the Defendants by Laytons of EC4Y 2LS
____________________
Crown Copyright ©
- Abbreviations, dramatis personae, etc.
- Fulton claims that it is entitled under Part III of the Act (sections 213 et seq) to design right in two features of the design of a range of umbrellas which are marketed by it. The umbrellas concerned are compact ladies' folding umbrellas, which have six spokes rather than the more usual eight, and which fold into a roughly rectangular or flat shape, not into a roughly cylindrical shape like most folding or telescopic umbrellas. Fulton markets them under the names 'Miniflat' and 'Flat Compact'. The two features of the umbrellas in which Fulton claims design right are the handle (especially of the Flat Compact) and the case. Fulton also claims that its design rights have been infringed by umbrellas imported and market by Grant Barnett under the name of '6F Ultra Compact'. It claims various forms of relief in consequence.
- The major questions which arise and the answers which, for the reasons which I will explain in this judgment, I will give to them are as follows. Do design rights subsist in the designs of the handle and the case? Answer: yes. Is Fulton the owner of them? Answer: yes. Did the importation and marketing of the 6F Ultra Compact by Grant Barnett give rise to infringements of Fulton's design rights? Answer: yes, but the details of this part of the case are quite complicated; I will describe them later, and it is not realistic for me to attempt to summarise the position at this point. To what forms of relief is Fulton entitled? Answer: This requires further argument. I will deal with it after a further hearing.
- I should record that Mr Richard Arnold QC represented Fulton before me, and Dr Heather Lawrence represented Grant Barnett. I am most grateful to both of them for their guidance.
- There are four illustrations at the end of this judgment. They show different views of a number of umbrellas, including the three umbrellas with which this case is directly concerned, and also (in the case of two illustrations) an umbrella which Fulton supplied to Bhs, one of its major customers. I will not attempt to describe in words what can be seen in the illustrations, but I specifically direct the reader's attention to the handles, the cases, and the flat or rectangular (rather than circular) shape which the umbrellas take when they are folded.
- Small folding umbrellas of the kinds with which this case is concerned are displayed for sale in their cases. They may be laid out on a shelf or counter, or they may be hung by their 'bangles' from a rack. The bangles can clearly be seen, attached to the sides of the handles, in illustration 1. The customer in the shop, before making a purchase, may choose to take the umbrella out of its case, to open it, and to inspect it generally. However, the first thing that the customer sees is the folded umbrella in its case, with the upper part of the handle showing at the mouth of the case. This is shown by illustration 4. Unfortunately the case in illustration 4 is not one of the cases in dispute in this case. It is the case in which Fulton originally used to supply umbrellas to Bhs. Nevertheless the illustration demonstrates what the customer sees, and brings out how important is the appearance of the case and the handle. They are what catch the customer's eye, more so than the functional parts of the umbrella, like the shaft, the ribs, the runner and the notch at the top of the shaft.
- From time to time as I discuss detailed matters which are in dispute I shall have to go in more detail into some elements of the facts, but in this part of my judgment I give a general account which will, I hope, enable the analysis and discussion which comes later to be followed and seen in its context.
- Fulton and Grant Barnett are two of the three principal suppliers of umbrellas operating in the United Kingdom market. Fulton was established in 1955 by Mr Arnold Fulton, who is still the controlling shareholder, the Chairman and the Chief Executive. His son is now the managing director. Mr Fulton was his company's only witness. He has a long experience and an intimate knowledge of the umbrella trade. Dr Lawrence criticised his evidence in a number of respects, but in general I do not agree with the criticisms. In my view Mr Fulton was an impressive and honest witness. He could perhaps be faulted by being overly suspicious of Grant Barnett and of its directors, but that criticism does not cast doubt on the evidence which he gave about things which he had done himself and matters which were within his knowledge as opposed to his suspicions.
- Grant Barnett was formed as a merger of two umbrella manufacturers at the turn of the last century, and has been a leading company in the business ever since. Its managing director is Mr D B Thomas, who has been in the umbrella trade for some 35 years. He was Grant Barnett's principal witness. The company called one other witness, Mr Peter Hewitt, who is another director. Mr Hewitt gave important evidence about the circumstances under which Grant Barnett ordered and then imported into the United Kingdom the 6F Ultra Compact umbrellas which were alleged by Fulton to have been (or to have contained) infringements of Fulton's design rights. There were some criticisms of the evidence of Mr Thomas and Mr Hewitt, but, as with Mr Fulton, I think that they did their conscientious (and considerable) best to give full and accurate answers to the questions which were asked of them. They naturally see the case in a way which favours the position of their own company, as did Mr Fulton. I do not underrate the evidence of any of them on that account.
- I shall begin my fuller account of the facts by describing how the facts appeared from the point of view of Fulton, and when I have completed that part of the account I shall go back a little in time and describe the events from the point of view of Grant Barnett.
- In all the years with which I am concerned Fulton bought most of its umbrellas from manufacturers in China. A major supplier was, and is, called Szu Mao, and that company became the supplier of the Miniflat and the Flat Compact, including their cases. Fulton had a liaison office in Taiwan. It was run by Ms Patricia Huang, who could interpret and deal with language difficulties which might otherwise have been a problem for Mr Fulton. Although the manufactured umbrellas were purchased from the Chinese suppliers like Szu Mao, Mr Fulton played a full part in devising what sorts of umbrellas should be made for his company, and what kinds of parts should be assembled into the finished products.
- At different times in the 1980s Fulton had had two products on the market which could be described as ladies' flat folding compact umbrellas. They were known as the Stowaway 1 and the Stowaway 3. As far as I know there never was a Stowaway 2. The Stowaway 1 had gone off the market in the first part of the decade. I understand that the kinds of folding ribs which it used had become outdated. The Stowaway 3 was on sale for a short time around 1989 and 1990. I have the impression that Mr Fulton thought it was potentially a good product, but it had problems which meant that it was not particularly successful. Specifically, the manner by which its handle was attached to the shaft - a sort of crimping technique - was unsatisfactory, and the handles tended to break off. In 1993 and 1994 Mr Fulton sought to develop a new model aimed at the same slot in the market. This became the Miniflat and the Flat Compact.
- Mr Fulton used the same or similar shafts, ribs, runners and notches as had been used on the Stowaway 3, but he wanted to devise a new kind of handle and a new kind of case. He also wanted to have the handle attached to the shaft by a better method than the one which had been unsuccessful with the Stowaway 3. He achieved his objectives in these respects in the course of 1993 and 1994. He spent quite a lot of time in China and Taiwan, at the premises of Szu Mao and of another company called Everwise (of which I say more in the next paragraph), working in conjunction with the operatives of those companies. When he was back in London he was in regular touch, by fax and telephone, with Ms Huang and through her with what was going on in the manufacturing facilities in China. His technique for designing a part for an umbrella was to begin with rough sketches, and then to work the concept through to a finished design. He did this in various ways - by further sketches, sometimes by more precise design drawings, and by having prototypes made which he considered and adapted until he was satisfied with the final product. The company did not keep copies of sketches or files recording all the stages, but Mr Fulton described them, and I am quite sure that matters were carried out as he described. His witness statement summarised it (accurately, as I find) in this way:
- As regards the handles of the Miniflat and the Flat Compact, the design process involved Everwise. The handles are made of injection moulded plastic. Designing them involves designing a mould. Szu Mao did not have the expertise required to make prototype moulds, but Everwise did, and Mr Fulton habitually used their services when he was designing a handle. For each of the Miniflat and Flat Compact handles he started with a rough sketch of the handle which he wanted to create. A skilled mould-maker, usually at Everwise but occasionally a craftsman in London, carved a prototype mould which was intended to be suitable for producing handles corresponding to Mr Fulton's sketch. Mr Fulton considered the first prototype, and gave instructions, either by drawings or verbally, for modifications. So the process went on until Mr Fulton was satisfied with the finished design. If I have the facts correctly, at that point Everwise's function was completed: it did not manufacture the production handles which became parts of the finished umbrellas. They were manufactured by Szu Mao working, directly or indirectly, from the final mould supplied by Everwise.
- In connection with the case the process was much the same and went on over much the same period. However, there was no equivalent of Everwise. Mr Fulton was working directly with Szu Mao and its operatives. As regards his general objective for the case I quote a passage from his witness statement. I am satisfied, taking full account of the cross-examination, that it is accurate:
- I am not sure of the exact timing of the stages which started with Mr Fulton's first concept for the Miniflat, progressed through designing it, and finished with production models being manufactured. Mr Fulton is inclined to date the first important stage at the time of a visit to the Far East in either December 1993 or March 1994. The first deliveries of the Miniflat which Fulton made to a customer were to The John Lewis Partnership in November 1995. In the case of those first deliveries the umbrellas were not contained in the Miniflat case. The stitching of the case fabrics had given rise to some production difficulties which had not quite been overcome by then. However, they soon were overcome, and subsequent sales of the umbrellas have mostly been made with the umbrellas contained in the Miniflat case.
- The Miniflat range of umbrellas has been commercially successful for Fulton. Mr Fulton cannot recall any other Fulton umbrella range which has sold so well. In his witness statement, drawn up in December 1999, he says that in the then current financial year sales had exceeded the previous year, so the success of the range was continuing.
- From about February 1996 Fulton, together with a marketing agency company, was in negotiations with Marks & Spencer about supplying the Miniflat to them. The negotiations were ultimately successful, but the product sold to Marks & Spencer was called the Flat Compact, not the Miniflat. It is basically the same umbrella supplied in the same case, but one difference, significant in the present proceedings, is that the Flat Compact handle differs from the original Miniflat handle. This can be seen in illustration 1. The Flat Compact handle is deeper than the Miniflat handle. Marks & Spencer said that they wanted a deeper handle, and in consequence Mr Fulton had to design the handle 'from scratch' (his words). The design went through the same process of sketches, prototypes made by Everwise, and modifications instructed upon by Mr Fulton, orally or in writing. The Marks & Spencer Flat Compact was launched in December 1997.
- I should add for completeness that, unless I have misunderstood, Fulton has now largely discontinued using the shallower Miniflat handle shown in illustration 1, and instead uses on all or most of its Miniflat umbrellas the deeper handle originally designed just for the Flat Compact as supplied to Marks & Spencer.
- The result of the foregoing was that from late 1995 or early 1996 Fulton was supplying the Miniflat to various retailers in the United Kingdom market, and from the beginning of 1998 it was supplying the Flat Compact to Marks & Spencer (basically the same umbrella, but with a different handle). Its product appeared to be successful. In March 1998 an employee of Fulton saw in a shop an umbrella which looked to him to be similar to the Miniflat and the Flat Compact. This was Grant Barnett's 6F Ultra Compact. The employee bought one and showed it to Mr Fulton. This led to correspondence alleging infringement by Grant Barnett of design rights claimed by Fulton, and ultimately led further to this action.
- This is the point where I divert from the facts as they appeared from the point of view of Fulton and examine them from the point of view of Grant Barnett. It seems that a difference between the businesses of the two companies is that Grant Barnett involves itself less in the design of the umbrellas than does Fulton. Grant Barnett's practice is for a director to make regular visits to the Far East to see what styles of umbrella the manufacturers currently have available. For the most part the company places its orders from those sources.
- Mr Hewitt, a director of Grant Barnett, gave evidence that in August 1997 he was in Taiwan, and one of the premises which he visited was the factory showroom of a company called Ming San, one of Grant Barnett's major suppliers. He was shown a six-rib ladies' umbrella which folded down into a rectangular compact shape. He placed a fairly small order (which he confirmed on his return to the United Kingdom), and that became the origin of Grant Barnett's 6F Ultra Compact. If I have understood Mr Hewitt's evidence correctly, the umbrella which he saw at Ming San was in a case, and the case was substantially the same design as the case which Fulton alleges infringes its (Fulton's) design right in its own Miniflat case. I am not clear whether the umbrella which he saw, and for which he placed an order, had a handle on it when it was in the showroom. It may have done, but if it did I do not know whether it was the same as the allegedly infringing handle which later was a part of the 6F Ultra Compact. What I do know is that Mr Hewitt asked Ming San to send to him some samples of handles, from which he would select the one which Ming San should fit on the umbrellas ordered by Grant Barnett.
- On Mr Hewitt's evidence the visit to Ming San which I have just described occurred in August 1997. He described how, after he had returned to England, he was in contact with Marks & Spencer, who showed him the Flat Compact which they (Marks & Spencer) were already buying from Fulton. Marks & Spencer wanted to know whether Grant Barnett could supply a similar umbrella. In the end nothing came of this approach, but the contact which Mr Hewitt had about it with Marks & Spencer had one consequence which I must describe. Marks & Spencer told him that, as respects the case of the Flat Compact (which was the same as the case which I am calling in this judgment the Miniflat case), Fulton had a registered design. (Registered designs receive a form of statutory protection different from the 1988 Act protection for unregistered design right on which Fulton relies in the present case.) Marks & Spencer also supplied Mr Hewitt with a sample of the case in which Fulton was supplying Flat Compacts to it (that is, a sample of the Miniflat case). This prompted him to cause Grant Barnett's solicitors to make enquiries about the case. It appeared that the case for which Fulton had registered design protection was very similar to the case in which Mr Hewitt had been shown the umbrella which he had ordered from Ming San a month or so before. Therefore he sent a fax to Ming San, including a sketch of Fulton's registered design, and instructed Ming San to make a few changes to the cases which it was going to manufacture (or get manufactured by someone else) and which it was going to supply to Grant Barnett. This fax was sent on 24 October 1997.
- I ought to say that, on behalf of Fulton, Mr Arnold does not accept that the events happened in the sequence described by Mr Hewitt. He suggests that Mr Hewitt must have been in contact with Marks & Spencer, so as to discover about the Flat Compact and its case, before he went to visit Ming San's showroom, not after. However, Mr Hewitt was very clear in his recollection. He was able to date with some precision the time when he was told by Marks & Spencer about Fulton's registered design, because he remembered that he wrote about it to Grant Barnett's solicitors almost immediately. His letter is dated 30 September 1997, whereas he had been at Ming San's premises in August. I do not think that there is any question of Mr Hewitt falsifying his evidence on this point, and Mr Arnold did not suggest that he did. Mr Arnold suggested that Mr Hewitt was mistaken. However, what Mr Hewitt said about the timing of his letter to Grant Barnett's solicitors seems to me almost entirely to rule out the possibility of a mistake by him. I accept his evidence about the way that things progressed in August, September and October 1997.
- At some time which I do not know exactly, but which I imagine was in or around November 1997, Ming San sent to Mr Hewitt four sample handles to be fitted to the umbrellas. He chose one of them.
- Ming San sent its first shipment of umbrellas to Grant Barnett on 24 December 1997. I imagine that they arrived in January 1998. Grant Barnett adopted for them the name 6F Ultra Compact. They had the handles which Mr Hewitt had chosen from the samples which he had been sent by Ming San. The handle can be seen most clearly in illustration 2. It is said to infringe the design right which Fulton claims to have in the handle of the Flat Compact, which is also shown in illustration 2. The umbrellas imported by Grant Barnett came in the cases which Mr Hewitt had seen in the showroom, modified in consequence of the instructions which he had faxed to Ming San on 24 October 1997, as explained in paragraph 23 above. I will describe at a later point what the modifications were. The case is one of the two pictured in illustration 3. Fulton contends that it infringes the design right which Fulton claims to own in the design of the Miniflat case, which is the other case in illustration 3.
- Grant Barnett sold the 6F Ultra Compact to retailers around the country. One of these must have been the shop at which an employee of Fulton purchased an umbrella in March 1998 (see paragraph 20 above). Grant Barnett is not importing the model any more. Mr Thomas says that it was a very small part of Grant Barnett's overall orders. The company sold 15,495 umbrellas for a total of just under £40,000. That amount in itself could not possibly justify the expense and effort which has been devoted to this case. I assume that Fulton considers it important as a matter of policy that it should assert and uphold what it believes to be its intellectual property rights. From Grant Barnett's point of view Mr Thomas states that the company is 'not particularly desperate to have a particular style, but we do not want to be prevented from selling something which every other umbrella company in the world is able to sell and which can be seen on any High Street'. I do not know how far it is true that other umbrella companies can sell the designs which this case is about, or that they can be seen on any High Street, but that is what Mr Thomas says by way of explanation of why Grant Barnett thinks it right vigorously to defend these proceedings.
- The relevant sections of the Act are in Part III. For the purposes of this judgment I need to quote some of them. The first section is section 213, which says what design right is, says what it subsists in, and describes the circumstances where it does and does not exist. The material parts of section 213 are the following.
- Section 214 states who the designer is. It contains no surprises. It provides:
- Section 215 deals with the ownership of design right. On the view which I take of this case I need only quote subsection (3).
- Infringement is dealt with by sections 226 to 228. The Act distinguishes between primary and secondary infringement. Primary infringement is committed by someone who makes an article which infringes someone else's design right. Secondary infringement is committed by someone who is not the maker of the infringing article but who carries out some other form of dealing with it. One such dealing is importing it into the United Kingdom. In the present case Grant Barnett did not make the 6F Ultra Compact, or its handle and case, but it did import it into the country. The relevant provisions are sections 226 to 228. I will not set them out here, but instead I will do that when I come to discuss in detail whether there have been infringements in the present case.
- Sections 229 et seq are concerned with remedies. Section 229(1) provides that an infringement of design right is actionable by the design right owner, and section 229(2) states:
- Design right has been in force for over 10 years now, and there is starting to be a fairly substantial body of case law. The foremost case is Farmers Build Ltd v Carier Bulk Materials Handling Ltd [1999] RPC 461, which is, I believe, the only case on design right which has as yet gone to the Court of Appeal. It is particularly concerned with the exclusion, under section 213(4), from statutory protection of designs which are 'commonplace'. In addition there have been a number of reported and unreported cases at first instance, and I shall refer both to the Farmers Build case and to some others from time to time as this judgment progresses.
- Design right was a new statutory concept created by the 1988 Act, and cases on other forms of protection for other kinds of intellectual property need to be used with caution. Nevertheless design right has some affinities with copyright and other affinities with the law of registered designs. However, an important difference from the law of registered designs is that unregistered design right does not create anything which could be called a statutory monopoly. Rather it is a right to be protected against copying. If a later article is produced which looks the same as or substantially similar to an earlier article in which unregistered design right subsists, but the later article was not copied, directly or indirectly, from the design of the earlier article, there is no infringement. Another significant difference between the two statutory regimes is that a design only qualifies for registered design protection if it has features which appeal to and are judged by the eye. The law of unregistered design right imposes no such requirement. Purely functional designs which are of no aesthetic attraction can qualify. Indeed the design which was protected in the Farmers Build case was a design of a machine for separating manure into solid and liquid parts. It seems unlikely that that design had any appeal to the eye at all.
- In the remaining sections of this judgment I consider the various (quite numerous) issues which are raised by the statutory provisions as applied, or contended to be applied, to the facts of this case.
- Section 213(2) is a short subsection, but it contains most of the fundamental concepts which go to determine whether design right subsists, and, if so, what it subsists in. The words are 'the design of any aspect of the shape or configuration... of the whole or part of an article'. So the core meaning of 'design' is the shape or configuration of an article. Prima facie that would mean the shape or configuration of the whole article. But it does not have to be the whole article: the design can be the shape or configuration of part of the article, and apparently any part may be sufficient. And the scope of what design right may subsist in is enlarged further by the reference to 'any aspect' of the shape or configuration concerned. This creates a large number of possible permutations which can arise in the case of any one article. Take an umbrella. Design right might not be claimed to subsist in the whole aspect of the shape or configuration of the whole of the umbrella, or it might be claimed to subsist in one or more particular aspects of the shape or configuration of one or more particular parts of the umbrella. Then again, each of the handle and the case, distinct from the whole packaged umbrella, might be regarded as an 'article' by itself for the purposes of formulating the claim to design right.
- In this connection the manner in which the claimant formulates its particulars of claim in the pleadings is important. Laddie J focused on this point in Ocular Sciences Ltd v Aspect Vision Care Ltd [1997] RPC 289 at 422. He said:
- Fulton has formulated its claims to design rights in a number of ways. I am not going to go through them one by one. The principal claims identify the Flat Compact handle as one subject of design right, and the Miniflat case as another. The claims may be put on the basis that each is an 'article', or on the basis that the article is the whole umbrella and the handle and case are 'parts' of it. In relation to the handle Fulton claims design right in the shape or configuration of the whole of it, and additionally claims design right in the shape or configuration of part of it. That part is the handle minus the protuberant rim which, in illustration 2, can be seen running round the bottom part of the handle. The illustration shows that the alleged infringing article, which is the handle on Grant Barnett's 6F Ultra Compact, does not have the protuberant rim. In relation to the Miniflat case, Fulton claims design right in the whole aspect of the shape or configuration of the whole of the case. As a matter of pleading all of these ways in which Fulton formulates different elements in its claim seem to me to be satisfactory.
- I should mention that Fulton has also asserted that it has design right in the Miniflat handle, which is the shallower handle shown in the two umbrellas at the right in illustration 1. Fulton may indeed be entitled to that right, but when the issues move on to whether its design rights have been infringed, it has concentrated its arguments on the Flat Compact handle. Before me it has not pressed for a decision that the handle of the 6F Ultra Compact was an infringement of design right in the Miniflat handle, although it does not concede that it was not. In the circumstances, so far as handles are concerned, I need not consider the Miniflat handle any further.
- Fulton has also incorporated in its particulars of claim assertions to design right attaching to the whole umbrella, with the handle and packaged in the case. I am not in sympathy with these ways of putting the matter. Fulton does not assert (at least not in these proceedings) that, independently of the handle and the case, it is entitled to design right in the shape or configuration of a flat six rib folding umbrella. If Grant Barnett's 6F Ultra Compact did not have the handle shown in illustration 2, and was not presented in the case shown in illustration 3, Fulton would not be arguing that there was any infringement of the design rights which it claims to have. So it is possible that Fulton's pleading is only asserting that, if the whole packaged umbrella is the 'article', then Fulton claims design right in the parts of the article which consist of the Flat Compact handle and the Miniflat case. On this basis Fulton would not claim design rights in any other parts of the article or in the article as a whole. I have no objection to that way of putting it. If anything more than that is asserted, I do have an objection to it. I believe that Fulton has a good claim to design rights in the Flat Compact handle and in the Miniflat case, but I do not think that it can somehow use the handle and the case to extend its rights to any other aspects of the designs of the Flat Compact and Miniflat umbrellas marketed by it.
- The result of the foregoing is that, in the rest of this judgment, I shall consider only the Flat Compact handle and the case. I shall consider whether design rights subsist in them, if so whether Fulton is the proprietor of the design rights, and, if it is, whether Grant Barnett has infringed them.
- It seems from section 213(2) and section 214(1) (which refers to the person who created the design), that, if a shape or configuration is to quality for design right, it must have been consciously designed by somebody. A shape or configuration which arose accidentally, without being designed, could not attract statutory protection. In this case, however, both the handle and the case were designed. I consider that, in the circumstances which I have described earlier, they were designed by Mr Fulton. I shall have to say a little more about this later, because I will need to consider a submission by Dr Lawrence that the handle was designed by Everwise, the specialist mould making company, and that the case was designed by Szu Mao. However, that submission goes to the question of whether, if design rights do subsist in the handle and the case, they are owned by Fulton or by someone else. At this point I am concerned with the prior question of whether the design rights subsist at all. In so far as one condition for them to subsist is that the shape or configuration of the handle and the case should have resulted from a design process, that condition is satisfied.
- A further condition is that the design has to be original. This condition is imposed by section 213(1). 'Original' means original in the sense established in cases concerning the same word in the copyright legislation, that the design (or, in copyright case, the literary, dramatic, artistic or musical work) originated with its creator. It implies no condition of a minimum level of artistic or aesthetic quality. Section 213(4), which excludes designs which are commonplace, gets closer to doing that, but the originality requirement in subsection (1) certainly does not do it. For authorities confirming that 'original' in section 213(4) carries its copyright meaning, see Aldous J in C&H Engineering v F. Klucznik & Sons Ltd [1992] FSR 421 at 427, and Mummery LJ in Farmers Build [1999] RPC 461 at 475.
- In the present case I am entirely satisfied on the evidence that the designs of both the Flat Compact handle and of the Miniflat case were original in the necessary sense. They originated with their designer (who in my opinion was Mr Fulton in the case of both articles), and were not simply copied by him from designs of other designers or from earlier designs of his own.
- The design of the Flat Compact handle was, I accept, influenced by Mr Fulton's earlier design of the Miniflat handle. This is apparent from illustration 1, which shows that the Flat Compact handle has some of the characteristics of the Miniflat handle, but is deeper. The Miniflat handle can itself be said to have been influenced by Mr Fulton's yet earlier design of the Stowaway 3 handle. However, I have looked carefully at all three of them, and though I can perceive the creative mind of the same designer coming through in each, I consider that they are clearly not the same design as each other. Any designer in almost any field is likely when devising a new design, to draw, consciously or sub-consciously, on his memory or his records of his own earlier designs. That does not prevent his new design from being original. In this case Mr Fulton's design of the Flat Compact handle was original, and is not prevented from being original by the fact that an evolution of design can be seen to have progressed from the Stowaway 3 handle through the Miniflat handle to the Flat Compact handle. I have already recorded Mr Fulton's evidence that, when Marks & Spencer wanted a deeper handle for the umbrella to be supplied to them, he redesigned the handle 'from scratch'. I accept the evidence, and I am satisfied that the Flat Compact handle was original.
- I am also satisfied that the Miniflat case was an original design. Indeed, Dr Lawrence did not suggest that it was copied from anything else.
- Section 213(4) denies design right to a design which is 'commonplace in the design field in question at the time of its creation'. It does this by stating that such a design is not to be regarded as original. This means that it is not to be regarded as original even if, apart from subsection (4), it would be original. A major submission of Dr Lawrence on behalf of Grant Barnett was that both the Flat Compact handle and the Miniflat case were commonplace.
- One point which I can get out of the way now is that in my view it does not make any significant difference in this case (though it might in others) to identify the precise 'design field in question'. Mr Arnold said that it was compact folding umbrellas. Dr Lawrence said that it was folding umbrellas. I express no preference, because I would come to the same conclusion either way.
- The concept of a design being commonplace has by now been considered in several cases, but above all by the Court of Appeal in Farmers Build [1999] RPC 461. The principal judgment was delivered by Mummery LJ. It gives valuable guidance, and the whole of it repays careful study. I believe that I have studied it most carefully, and that I have taken account of the many points which the learned Lord Justice makes in it. I do not propose to prolong this judgment by setting out lengthy citations from the judgment, but I do wish to mention some propositions which I have found particularly helpful for the present case.
- It seems to me that the Lord Justice encourages other judges to interpret the word 'commonplace' narrowly in this context rather than widely. Bearing in mind that design right can attach to functional articles which have no particular aesthetic appeal, the courts should be slow to deny the statutory protection to a design on the ground that it is commonplace. If the courts adopted a wide view of the sorts of designs covered by the term 'commonplace', many unaesthetic but functional designs, which Parliament is likely to have intended to protect against being copied, would be denied the protection.
- Another point is that the denial of design right protection to commonplace designs does not mean that a design must be new to qualify for protection. A design which is new is fairly unlikely to be commonplace, but it is a mistake to conclude that, if a particular design has been used before and so is not new, therefore it is commonplace. It might be, but the conclusion does not necessarily follow. This is another significant difference between the law of registered designs and the law of unregistered design right. A registered design has to be new: see section 1(2) of the Registered Designs Act 1949, reproducing the effect of earlier legislation. An unregistered design, to be protected under the 1988 Act, does not have to be new. It must not be commonplace, but that is not the same thing. Mummery LJ makes these points in Farmers Build at pp. 481-2.
- A consequence of the point made in the previous paragraph is that a design should not be denied design right protection merely because the defendant, in researching what is often referred to as the 'prior art', discovers an obscure article which is fairly similar to the design in which design right is claimed. That would not be enough to make the claimant's design commonplace. In this connection I hope that it is not presumptuous of me to quote one sentence from an unreported judgment of my own in a case called Frayling Furniture Ltd v Premier Upholstery Ltd (1998). The case was about a particular style of armchairs, and the one in which design right was asserted was known as the Sienna. I said this:
- A possible example in the present case is one of the umbrellas produced in evidence by Grant Barnett as 'prior art' and intended to show that Fulton's products were commonplace. This was referred to as the Asin umbrella, and of all the other umbrellas produced by Grant Barnett it was by far the closest in appearance to the Miniflat and the Flat Compact. However, no-one knew anything much about it. It had been shown to Mr Thomas by (I imagine) Ming San in the course of Grant Barnett's preparations for this case. Mr Thomas was certainly told that it was made by a sister company of Ming San. It seemed from a label to be intended for the Japanese market, but neither Mr Thomas nor Mr Fulton had encountered it in the past. There was no evidence that it had ante-dated the Miniflat and the Flat Compact, so it may not have been 'prior art' at all. Mr Fulton suggested that it might have been another copy of the Miniflat or the Flat Compact, and in my view that is just as possible as the alternative thesis that it was an earlier product which ante-dated the Miniflat. I do not attach any significance to the Asin umbrella.
- A further important point which Mummery LJ makes in Farmers Build (principally at p. 483) is that the commonplace exclusion applies to the shape and configuration of the article, not to the article itself. Cases for folding umbrellas are commonplace articles. That does not mean that the shape or configuration of a particular case will also be commonplace. It may or may not be. I was shown many samples of umbrella cases. The designs of some of them seemed to me to be commonplace. The designs of others, including the Miniflat case, seemed to me not to be commonplace.
- At page 482 in Farmers Build Mummery LJ gives detailed guidance about how a judge should approach determining a question of whether a design is commonplace. The important points as far as my decision in this case are concerned are that the judge should 'ascertain how similar that design is to the design of similar articles in the same field of design made by persons other than the parties or persons connected[1] with the parties; that the comparative exercise should be conducted in the light of evidence, including expert evidence; and that 'in the end, however, it is for the court and not the witnesses, expert or otherwise, to decide whether the design is commonplace'.
- I have sought to proceed in the way that Mummery LJ describes. I have taken into account his general observations on the meaning of the word 'commonplace' in this context. I have considered the evidence of Mr Fulton and of Mr Thomas with care. I have read and listened to the submissions of counsel. Above all I have examined and reflected upon the other handles and other umbrella cases which have been produced in evidence, and which are said by Grant Barnett to demonstrate that the designs both of Fulton's flat Compact handle and of Fulton's Miniflat case were commonplace when they were created. Having done those things I have to say that I do not agree with what Grant Barnett says. In my judgment the designs, both of the handle and of the case, were not commonplace at the relevant times.
- In relation to the handle a significant part of Grant Barnett's case was that, since the Flat Compact umbrella folded down into a flat shape rather than a circular shape, the natural design choice for a handle was a block (rather, for example, than a crook), that the block (viewed from the top) would be broadly rectangular in shape so as to reflect the shape of the folded umbrella, and that in width and length (again viewed from the top) it would have much the same dimensions as those of the folded umbrella. Grant Barnett says that any handle for a folding umbrella which has those general characteristics is commonplace in the design field in question. It says that the Flat Compact handle has those characteristics, and therefore it is commonplace.
- I do not agree with Grant Barnett's arguments in these respects. I would accept that a flat folding umbrella, like the Flat Compact, is likely to have a handle which is roughly rectangular in shape. (That is not inevitable: at one time Grant Barnett marketed a 6 rib folding umbrella called the 5 SMSR. The folded shape of the umbrella was more rectangular than circular, but the umbrella had a circular handle.) Nevertheless, while I accept that it could be said to be commonplace for a flat folding umbrella to have a roughly rectangular handle, that does not mean that the shape or configuration of any particular handle is commonplace merely because it is roughly rectangular. Within the broad parameters of size and shape which Grant Barnett says are to be expected of handles for flat folding umbrellas, there is considerable scope for detailed design work to be undertaken, and for the creation of a shape or configuration which has its own special qualities and which is not commonplace. The Flat Compact handle is not a stark rectangular block with right angle corners. The sides are slightly sloped, the top has a partially domed effect, and the corners are rounded rather than sharp.
- These characteristics were designed, and it was not inevitable that they would be possessed by whatever handle Mr Fulton created. He thought carefully about the shape which he wanted to create, and in my view he created one which, whether it appeals to a particular observer or not, cannot be described as commonplace. When I consider the other handles which are shown to me in Mr Thomas's evidence on behalf of Grant Barnett, what strikes me most is not how similar they are to the Flat Compact handle, but rather how much scope there remains for differences of detailed design while remaining within the general confines of size and approximate overall shape. It is true that in several instances the differences between the shape or configuration of the Flat Compact handle and the shape or configuration of other handles are differences of detail, but that does not cause me to change my conclusion.
- In this connection I note, and respectfully agree with, the following passage in the judgment of Nicholas Underhill QC, sitting as a High Court judge in Scholes Windows Ltd v Magnet Ltd [2000] FSR 432 at 442.
- For the foregoing reasons I do not accept Dr Lawrence's submission that the Flat Compact handle was commonplace in the design field in question (however that field is delimited) and for that reason fails to qualify for design right.
- I turn to consider the Miniflat case. I do not think that the case is commonplace either. I have already made the point that for cases to be commonplace accessories of folding umbrellas does not mean that the shape or configuration of any particular case is commonplace. Sometimes it is. Many folding or telescopic umbrellas are supplied in nondescript cylindrical cases, usually made of soft cloth (likely to be the same cloth as the cover of the umbrella itself). These cases have one longitudinal seam, and when they are removed from the umbrella they have no particular shape. They tend to get stuffed into a pocket or a handbag. I would regarded cases of that sort as commonplace. But other cases for umbrellas may have shapes or configurations which are not commonplace, and I believe that the Miniflat case is one of them.
- The Miniflat case was carefully designed by Mr Fulton, and in my view he applied considerable thought and design experience to the process. I have quoted in paragraph 15 above his evidence that he 'decided that the umbrella case needed to be of clearly rectangular cross section to emphasise the 'flatness' of the umbrella', and that he 'came up with a new case design for the Miniflat'. The nature of the design can be seen in illustration 3. The case is clearly rectangular in shape, and this is emphasised by the outward facing seams on all the edges of the case: the edges and corners are sharp and not rounded, and that is the result of a conscious design choice. A feature of the case, and a feature which in my view is an aspect of shape or configuration, is that it retains its shape when the umbrella is removed. Illustration 3 shows an empty case lying on a table surface clearly retaining its rectangular shape. (I shall say more about this in paragraph 70 below, in connection with section 213(2)(a), which excludes from design right a 'method or principle of construction'.) If the case had been one of the common cylindrical soft cases which I referred to in paragraph 612 above, illustration 3 would have looked different: it would have shown a shapeless piece of cloth lying on the table. The Miniflat case has an open top by means of which the umbrella is inserted. There is a 'cuff' at the upper part of the case and a vent on one corner of the cuff in order to facilitate insertion and removal of the umbrella.
- All of the features mentioned in the preceding paragraph are design choices made by Mr Fulton. I do not accept the arguments presented on behalf of Grant Barnett (by Mr Thomas in his evidence and by Dr Lawrence in submission) that most of the features were more or less dictated by the shape of the folded umbrella. An umbrella which, when folded, has a flat shape, does not have to have a case of rectangular shape or configuration. Many of the other flat folding umbrellas which were in evidence before me were contained and sold in soft cylindrical cases. When those cases have the umbrellas inside them they naturally take on the more or less rectangular shape of the folded umbrellas, but at other times they are essentially shapeless. Grant Barnett used to market an umbrella called the 5SR Elle Miniflat which was sold in a case of that sort. Indeed the case, shown in illustration 4, in which Fulton used to supply Miniflat umbrellas to Bhs was also a soft cylindrical case. It looks rectangular in the photograph because the umbrella is inside it, but if the umbrella was removed the case would lose its shape.
- In a similar way it is not inevitable that a case for a folding umbrella will have an open mouth at the top or, if it does, a vent at one corner. It may for example have a flap which folds over, and some of the cases which were exhibited to me do. Other exhibited cases were so designed as to retain a flat shape when the umbrellas were removed, but not necessarily the rectangular box shape which in the Miniflat case results from there being four stitched longitudinal seams. One case, for example, has two longitudinal seams. They give the case its own shape or configuration, and it is one which is suitable for a case to hold a flat folding umbrella. But is it not the same shape or configuration as that of the Miniflat case.
- Grant Barnett was able to produce in evidence some cases, many of two or three decades ago now, which did have rectangular shapes with six sides, sometimes with outward-pointing seams. Mostly they were made of some hard plastic material, and mostly they were designed to contain men's umbrellas which have long since gone off the market. That in itself would not prevent them carrying significance for the decision on whether the Miniflat case is or is not commonplace, but when they are looked at none of them have the same shape or configuration as the Miniflat case. They are much larger, and the proportions of the six sides which they have are altogether different from those of the Miniflat case. I look at them, and then I look at Fulton's Miniflat case and I ask myself: 'Does the Miniflat case just look like a routine updating of those older cases?' I answer that it does not. There are some affinities, but there are as many or more differences, and, following the approach described by Mummery LJ in Farmers Build, I cannot see that the other cases put in evidence by Grant Barnett can lead me to conclude that the Miniflat case is commonplace.
- There are two other points which I wish to make before leaving this aspect of my judgment: one is a point which I take marginally into account in support of my view, and the other is one which I do not take into account. The first point is that there is some evidence that the Miniflat case is thought to attract buyers. Bhs was originally supplied with Miniflat umbrellas in the soft fabric cases shown in illustration 4. Mr Fulton said in evidence that Bhs has recently pressed to be supplied with the umbrellas in the Miniflat case instead. Fulton is now supplying them to Bhs in that case. This is a pointer to the Miniflat case being something more than commonplace. The second point is that, although the Miniflat case retains its rectangular shape when the umbrella is removed (as shown in illustration 3), it can also be compressed and put in a pocket or a handbag. When taken out again it resumes its box-like shape. This is an attractive attribute of the case, but I do not think that it is an aspect of shape or configuration; so far as the claim for design right is concerned I regard it as neutral.
- By section 213(3)(a) design right does not subsist in a 'principle or method of construction'. Dr Lawrence argues that this exclusion prevents design right being claimed for the Miniflat case. (I do not think that she advances this argument as regards the Flat Compact handle.) I do not agree with the argument.
- There has long been a similar provision in the registered design legislation. Now it is section 1(1)(a) of the Registered Designs Act 1949. In predecessor legislation the words were 'a mode or principle of construction'. On those Luxmoore J said in Kestos Ltd v Kempat Ltd [1936] RPC 139 at 151: 'A mode or principle of construction is a process or operation by which a shape is produced as opposed to the shape itself.'
- It is certainly true that there are methods of construction involved in the creation of the Miniflat case. One is the method whereby the case retains its rectangular box-like shape when the umbrella is not contained within it. Another is the stitching technique which creates the outward-pointing seams on the edges and at the corners of the case. However, the design of the case is the shape or configuration produced by those methods of construction, not the methods by which that shape or configuration is produced. The fact that a special method or principle of construction may have to be used in order to create an article with a particular shape or configuration does not mean that there is no design right in the shape or configuration. The law of design right will not prevent competitors using that method or principle of construction to create competing designs (of course other areas of the law, like patents, might prevent competitors doing that), as long as the competing designs do not have the same shape or configuration as the design right owner's design has.
- Therefore the exclusion for a method or principle of construction does not deprive Fulton of design right in the design of the umbrella cases.
- I repeat the terms of section 213(3)(b)(i). It provides:
- The provision is often referred to as the interface or the 'must fit' exclusion. It is generally accepted that its main purpose is to prevent design right being claimed in respect of spare parts, like the replacement exhaust pipes in British Leyland Motor Corporation Ltd v Armstrong Patents Co Ltd [1986] AC 577. That was one of the copyright cases which exposed the deficiencies in the previous law and had a substantial influence on the introduction, by the 1988 Act, of unregistered design right. There are indications in the developing case law of design right that the provision should be construed by reference to its purpose, and should not be given a breadth which would take it far beyond what it was intended to achieve. Thus David Young QC, sitting as a High Court judge in Baby Dan AS v Brevi srl [1999] FSR 377, said that, in reaching his decision in the case, he was 'giving a purposive construction to the "must fit" provisions, which is to deny protection to articles such as spare parts'. In the unreported Frayling case (1998), to which I referred earlier, I quoted and associated myself with an observation of counsel that: 'once you start cutting out elements of shape and design where two items are in contact with each other, it is not long before you find that there is nothing left.'
- Accordingly I am not prepared to accept Dr Lawrence's submission that, because the Miniflat case is designed to contain the folded umbrella, therefore section 213(3)(b)(i) applies and prevents design right subsisting in the case. It would in my view be unacceptable to construe the provision as meaning that any article which is shaped so as to cover or contain another article cannot quality for design right.
- There is in any event another reason, of a more 'small print' nature, why I do not accept Dr Lawrence's submission. Section 213(3)(b)(i) does not provide that design right cannot subsist in an article if it can be placed in, around or against another article. Rather it provides that design right cannot subsist in features of shape or configuration which enable the article to be so placed. If this is going to apply, in my view the particular aspects of shape or configuration in which design right is claimed to subsist, but as respects which the claim is going to fail because of the interface exclusion, must be specifically designed so as to enable the one article to be placed in, around or against the other. One can readily see this with an article like a spare exhaust pipe. It has to be exactly shaped and configured so as to connect up with the engine of the car and to enable the exhaust gases to be voided into the outer air. With the Miniflat case on the other hand, the particular features which give it its unique shape or configuration (like the rectangular box-shape and the outward facing seams at the edges) are not designed so as to enable it to perform the function of containing the umbrella. Any case of the same approximate dimensions would do that, including simple cylindrical cases like many which were in evidence. The features of shape or configuration which are special to the Miniflat case are designed to perform the function of looking attractive and promoting sales of the product, not to perform the function of enabling the case to be placed around the umbrella.
- The 'must fit' exclusion is immediately followed by another exclusion, commonly referred to as 'must match'. Section 213(3)(b)(ii) reads as follows.
- I cannot agree with this argument either. In the first place it is an overstatement to say that you are 'constrained' to choose a flat rectangular handle of cuboid shape. Grant Barnett did not choose such a handle for its 5 SMSR model. I would accept that the designer is likely to choose a rectangular handle, but that stops a long way short of saying that he is constrained, or even likely, to choose a handle with the precise aspects of shape or configuration which are possessed by the Flat Compact handle. Fulton does not claim design right in 'flat rectangular handles of cuboid shape' generally. It claims design right in the particular shape or configuration of the Flat Compact handle specifically. That claim does not get close to being ruled out by the 'must match' exclusion in section 213(3)(b)(ii).
- There is one other exclusion in section 213(3). Design right cannot subsist in 'surface decoration'. Dr Lawrence says that this applies in some way to the Miniflat case. I fear that I have not properly understood the argument, but I cannot see how the exclusion could apply to any significant part of the design of the case. In particular, I do not think that it can in some way require the outward facing seams on the edges and at the corners of the case to be disregarded. They do not seem to me to be mere surface decoration. On the contrary, I consider that they are significant aspects of the shape or configuration of the case, accentuating its rectangular box-like character.
- I accept that the fact that the seams protrude from the case so that they are more than two dimensional does not automatically prevent them being surface decoration (see Mark Wilkinson Furniture Ltd v Woodcraft Design (Radcliffe) Ltd [1998] FSR 63, a case about pre-designed kitchens). But the proposition does not go any further than that. In particular I do not accept that a design feature which, like the seams on the Miniflat case, exists in a third dimension, but only in a small third dimension, must be surface decoration. It might be, but it does not have to be. There is a value judgment for the court to make, and my value judgment is that the seams on the Miniflat case are significant aspects of the case's shape or configuration, and are more than surface decoration.
- There are no other detailed conditions of section 213 which I need to consider in order to conclude that design right subsists in the Flat Compact handle and in the Miniflat case. Dr Lawrence has properly and helpfully taken me to virtually every condition in the section and submitted that in one way or another it is not satisfied by the handle or the case or both. However, for the reasons which I have given in detail in the foregoing paragraphs, I do not accept her submissions in these respects. I conclude that design rights do subsist in the handle and the case. The next question which I need to consider is whether Fulton owns them.
- The first matter to determine is: who was the designer of the articles in which the design rights subsist, namely the Flat Compact handle and the Miniflat case? By section 214(1) it was the person who created the designs. To a considerable extent I have dealt with this earlier. In my judgment the designer of both articles was Mr Fulton. I do not accept Dr Lawrence's submission that Everwise was the designer of the handle and that Szu Mao was the designer of the case. The mould-makers at Everwise and the sewing-machinists at Szu Mao worked to Mr Fulton's instructions in creating the shape of the mould and the case. He was the designer, and they were not. On that basis I move to section 215(3). That sub-section provides that, where a design is created by an employee in the course of his employment, the employer is the first owner of the design right. In my opinion Mr Fulton was an employee of A Fulton Company Ltd and created the designs in the course of his employment. Therefore the company was the first owner of the design rights. There is no suggestion that the first ownership has changed, so the company has always been the owner of the design rights.
- Dr Lawrence has an argument against this. There is a statement in Fulton's accounts that 'no director has a service contract with the company'. In a response to a request for further information Fulton said that in Mr Fulton's case there was 'no contract of employment'. Section 263(1) provides that in section 215 'employee' refers to employment under a contract of service. Dr Lawrence says that, since on the basis of Fulton's own documents Mr Fulton did not have a contract of employment, he cannot have created the designs as an employee in the course of his employment.
- I do not agree with this argument. Mr Fulton is the Chairman and Chief Executive of Fulton. He works for no-one else. He is taxed under PAYE. In the circumstances it is perfectly plain to me that he is an employee of Fulton, and none the less so although he is also a director and the principal shareholder. The statements in the accounts and the further information on which Dr Lawrence relies means only that there is no written contract of employment, not that there is no employment at all. I am unimpressed by arguments that, if Mr Fulton was an employee of the company, then under the employment protection legislation there ought to have been a written contract. Maybe there ought, but even if that is right the absence of one would not persuade me to adopt the unrealistic conclusion that Mr Fulton was not employed by the company. There is manifestly a contractual relationship of some sort between them. I do not know what it can realistically be other than the relationship of employment.
- On behalf of Fulton Mr Arnold put arguments to me that, even if Mr Fulton was not an employee of the company, the company still was, by virtue of other provisions, the owner of the design rights in the handle and the Miniflat case. I do not need to consider these arguments, because I have no hesitation in accepting Mr Arnold's primary submissions that Mr Fulton was an employee of the company, that he created the designs in the course of his employment, and that therefore Fulton was and remains the owner of the design rights in the designs.
- I have already observed that the type of infringement alleged by Fulton against Grant Barnett is not the primary infringement committed by a maker of alleged infringing articles, but the secondary infringement committed by the importer into the United Kingdom of infringing articles made by someone else. The relevant provisions of the Act are sections 226 to 228. The one which is directly concerned with secondary infringement is section 227, but it takes the reader forward to the definition of 'infringing article' in section 228, which in turn takes the reader back to the conditions for primary infringement in section 226. The three sections, so far as relevant, are as follows. I shall reproduce in bold print words which are particularly important in the present case.
- It appears to me that those sections in combination raise four questions. (1) Were the articles which Grant Barnett imported and which Fulton complains about made 'substantially to the designs' of which Fulton was the owner of the design rights? (2) Were Fulton's designs copied by whoever made the articles complained of? (3) Did Grant Barnett know that the articles complained of were infringing articles? (4) If the answer to question (3) is no, did Grant Barnett have reason to believe that the articles complained about were infringing articles? In question (3) the concept of knowledge that the articles complained about were infringing articles, and in question (4) the concept of reason to believe that they were infringing articles, link back with questions (1) and (2). They mean knowledge or reason to believe, first, that the articles were made substantially to the designs of which Fulton owned the design rights, and, second, that they were copied from Fulton's designs. A general point which applies to all the questions is that in my view they need to be considered separately in relation to (1) the handles, and (2) the cases, of the 6F Ultra Compact umbrellas imported by Grant Barnett.
- The first question therefore subdivides into two questions. (1) Was the 6F Ultra Compact handle made substantially to the design of the Flat Compact handle? (2) Was the 6F Ultra Compact case made substantially to the design of the Miniflat case? These are questions of objective similarity, and in my view the answers to them are: yes to each question - perhaps more decisively so as regards the case than the handle. The word 'substantially' in section 228(2) shows that exact similarity is not essential. Substantial similarity is enough. In my judgment a purchasing member of the public, if shown the two handles side by side and the two cases side by side (as they are shown in illustrations 2 and 3) and asked whether they are made to substantially the same design as each other, would answer that they were.
- In relation to the handles, there is one obvious difference The Flat Compact handle has a protuberant rim round its base. The 6F Ultra Compact handle does not. (See illustration 2.) In my view that difference does not prevent the two handles being substantially the same in design. In other respects the general shape and configuration of the 6F Ultra Compact handle - the slopes of the sides, the slight dome on the top, the degree of rounding at the edges and corners, and the proportions of the longer and shorter sides - are closely similar to the equivalent features of the Flat Compact handle. I consider that, despite the absence of a rim at the base of the 6F Ultra Compact handle, that handle viewed objectively, though not made exactly to the design of the Flat Compact handle, is made substantially to that design. One result of this is that I do not need to consider how, in this part of the case (the part which concerns infringement), I would have applied the concept in Fulton's pleading of design right subsisting in the shape or configuration of the part of the Flat Compact handle which consists of the handle minus the rim around its base.
- Turning to the Miniflat case, there are two differences between that and the 6F Ultra Compact case. They can be seen in illustration 3. The first is that, if the vent at the top of the Miniflat case is in, so to speak, the north west corner of the case, the vent in the 6F Ultra Compact case is in the north east corner of the case. No-one suggests that this difference can prevent the two cases being made substantially to the same design. The other difference is that, on the Miniflat case, the stitched seams which create the outward-facing edges continue on the two longer edges at the bottom of the case. On the 6F Ultra Compact case there is one stitched seam running along the centre of the bottom of the case. In my view this is a minor difference which does not prevent the two cases, viewed objectively, being made substantially to the same design. Indeed, I believe that most observers would not even notice this small difference in the stitching and seam patterns on the least conspicuous part of the case. If a Miniflat umbrella and a 6F Ultra Compact umbrella, each in its case, were laid or hung side by side in a shop, it would be a most exceptional member of the buying public who would perceive the difference.
- The insignificance of this difference between the seams on the two cases is emphasised when I explain how it arose. In my account of the main facts I recorded how, when Mr Hewitt learned that Fulton had a registered design for the Miniflat case, he contacted Ming San and instructed Ming San to make changes to the design of the case in which Mr Hewitt had arranged for Grant Barnett to buy the 6F Ultra Compact. The change which he instructed to have made was the removal of seams along the two longer edges at the bottom of the case, and the creation of one seam instead, in the position shown in illustration 3. In other words, when Mr Hewitt first saw the case at Ming San the difference to which Grant Barnett now points between it and Fulton's Miniflat case did not exist, and it only exists now because Grant Barnett gave instructions for it to be created.
- I move on to the second of the questions which arise in connection with Fulton's allegation that there was secondary infringement by Grant Barnett. Were the handle and the case of the 6F Ultra Compact copies, directly or indirectly, from the Flat Compact handle and the Miniflat case? In the nature of things I cannot be certain about this question, but I believe that on the balance of probabilities the answer is: yes, both for the handle and for the case.
- Let me first get one point out of the way. No-one suggests that Grant Barnett itself copied the handle or the case: it bought them from Ming San. Mr Arnold nevertheless invited me to find that Grant Barnett instigated the copying by procuring Ming San (or its suppliers) to copy the items. I do not make any such finding. I see no reason to doubt that Mr Hewitt gave honest and complete evidence about how Grant Barnett came to purchase the 6F Ultra Compact, with the handle and case of which Fulton makes complaint. Copying of these items at the instigation of Grant Barnett played no part in it. The handle and the case were among the range of parts for umbrellas which Ming San had available, and Grant Barnett chose them.
- Fulton tried to reinforce its contention that Grant Barnett instigated the copying by evidence of two previous occasions when Grant Barnett had purchased fabrics with designs in which Fulton had copyrights. The suggestion was that Grant Barnett had a history of copying Fulton's designs. However, when these matters were explained by Mr Thomas in his evidence, Fulton's allegations that Grant Barnett had a propensity to dishonest copying disintegrated. The two occasions were minor mistakes, rectified as soon as they were pointed out.
- However, to say, as I do, that Grant Barnett did not copy the Flat Compact handle and the Miniflat case, and did not procure the copying of them either, does not conclude the matter. There remains the possibility that Ming San or one or more of its suppliers copied them. In one of Mr Fulton's witness statements he said that it was common for Far Eastern manufacturers to copy designs of umbrellas the umbrella components. ('... they are copied to satisfy the demands of other buyers willing to take any legal risk there may be.') This evidence was not challenged or controverted.
- It is rare in intellectual property cases for there to be direct evidence of copying of someone else's copyrights or designs. Plagiarists do their copying in secret. The courts proceed on the basis that a close similarity between the claimant's design and the alleged infringing article, coupled with the opportunity for the alleged copier to have access to the claimant's design or work, raises an inference of copying. It is then up to the defendant to rebut the inference by evidence which shows that the apparent similarity arose in some other way. In Ibcos Computers Ltd v Barclays Finance Ltd [1994] FSR 275 at 297, Jacob J said that 'the concept of sufficient similarities shifting the onus on to the defendant to prove non-copying is well recognised in copyright law'. He added that he thought that the proposition 'is not so much one of law as of plain rational thought'.
- In the present case I consider that there is sufficient similarity between Fulton's Flat Compact handle and the 6F Ultra Compact handle, and between Fulton's Miniflat case and the 6F Ultra Compact case, to raise an inference of copying. Further, by the time when Mr Hewitt was shown the case in Ming San's showroom and was sent a sample of handles which included the one which he chose for the 6F Ultra Compact, Fulton's Miniflat and Flat Compact were established on the market. So manufacturers who were disposed to look for promising designs and to copy them had had the opportunity to consider Fulton's designs of the handle and the case. In the circumstances the onus of refuting copying shifts to the defendant. The defendant is, of course, Grant Barnett, not Ming San, and I entirely accept that no-one at Grant Barnett knew whether the handles and cases which it was purchasing had been copied. However, it would have been open to Grant Barnett to adduce evidence from Ming San (which is, after all, a regular supplier to Grant Barnett), but no such evidence was adduced. I assume that Grant Barnett has been in contact with Ming San about these proceedings. At any rate, it has certainly been in contact with Ming San's sister company which produced the Japanese Asin umbrella referred to in paragraph 53 above, and I imagine that that contact arose from an earlier contact with Ming San.
- In support of the inference of copying Fulton can point, and does point, to a number of less obvious similarities which I have not yet mentioned. Some of them may be no part of the designs in respect of which Fulton is, in my view, entitled to design right. But they can nevertheless provide supportive evidence of copying.
- On the underside of the Flat Compact handle (an area which is not normally noticeable) there is a cross-piece, described as 'webbing' which is there to provide structural strength. Most handles have something similar, but Mr Fulton said that he designed the handle with a rather broader webbing than was found on most handles. The 6F Ultra Compact handle has the broader design of webbing. Mr Fulton makes a similar point about the position at which, and the manner in which, the bangle is attached to the handle. Mr Fulton designed the handle so that the bangle was attached through a hole at the side, as shown in illustration 1. The device by which it was attached was a type of fitting which Everwise supplied to him and which it (Everwise) told him it had originally made for the large United States-owned umbrella group, Totes. Totes had hardly ever used the fitting, and Mr Fulton thought that the use of it by him on the Miniflat handle, and later on the Flat Compact handle, was the first significant commercial use of it. The 6F Ultra Compact handle had its bangle attached at the same point and in the same way (by the Totes fitting) as had been used on the Miniflat and Flat Compact handles. Similarly, the precise technique by which Mr Fulton had had the handle attached to the shaft (a major improvement on the unsuccessful technique which had been used for the Stowaway 3) was reproduced exactly in the handle of the 6F Ultra Compact.
- Fulton claims no design right in the Totes bangle fitting, or in the technique by which the handle was attached to the shaft. What it does say, however, is that when the 6F Ultra Compact handle not merely looks very similar to the Flat Compact handle, but also has the same sort of webbing, uses the same sort of Totes fitting to attach the bangle at the same position on the handle, and is attached to the shaft in the same way, the inference of copying becomes all the stronger, and certainly should prevail in the absence of no evidence to refute it. I agree with these arguments.
- In relation to the Miniflat case and the 6F Ultra Compact case there is a similar point. I have commented that a characteristic of the Miniflat case is the way that it retains its box-like shape when the umbrella is removed from it, but can nevertheless be compacted and put in a pocket or a handbag. This is achieved by a particular construction technique which Mr Fulton believes was first devised for the Miniflat case. I think that I am right in saying that the same technique is used, and achieves the same results, in the 6F Ultra Compact case.
- I accept that similarities between two products can arise by coincidence, or by reason of the function of the products leaving little scope for any significant differences in design. In this case, however, Mr Arnold says that the similarities, both of appearance and of construction, are too strong and so numerous that to explain them as coincidences or as natural consequences of products with similar functions has no credibility. I accept this argument, and in the absence of any evidence adduced by Grant Barnett from Ming San or its suppliers, I find that on the balance of probabilities the handle and the case of the 6F Ultra Compact were copied, directly or indirectly, from the Flat Compact handle and the Miniflat case, each of which was an article in which Fulton owned the design rights.
- The third question relevant to whether there were secondary infringements by Grant Barnett is: did Grant Barnett know that the 6F Ultra Compact handle and case were infringing articles? This question arises under the concluding part of section 227(1). In the context the question turns on whether or not Grant Barnett knew that its handle and case (1) were made substantially to the designs of the Flat Compact handle and the Miniflat case, and (2) were copied directly or indirectly from the Flat Compact handle and the Miniflat case. So far as this question is concerned only actual knowledge on the part of Grant Barnett would suffice. (It is different when I come to the next question, which concerns whether Grant Barnett had reason to believe that the two items were infringing articles.) Given the findings of fact which I have already made my conclusion is that Grant Barnett did not know that the two items were infringing articles. Mr Hewitt did not know that the 6F Ultra Compact case was an infringing article when he saw it in Ming San's showroom, and he did not know the the 6F Ultra Compact handle was an infringing article when he chose it from the samples which Ming San had sent to him.
- The other point to make in this connection is that it would be different if I was persuaded by Mr Afnold's contention that Grant Barnett covertly instigated the copying of the handle and case by Ming San. Since I am not persuaded by that contention, I adhere to my conclusion that at all relevant times Grant Barnett did not know that the handle and the case were infringing articles.
- The final question on this issue (whether or not there was secondary infringement by Grant Barnett) is: although Grant Barnett did not have actual knowledge that the 6F Ultra Compact handle and case were infringing articles, did it have reason to believe that they were infringing articles? The question turns on whether it had reason to believe (1) that the handle was substantially similar to the Flat Compact handle and was copied from it, and (2) that the case was substantially similar to the Miniflat case and was copied from it.
- The expression 'reason to believe' in this context was new in the 1988 Act, and appears in the copyright provisions of the Act as well as in the design right provisions. Morritt J considered the meaning of it in LA Gear Inc v Hi-Tech Sports plc [1992] FSR 121, a case about the copyright in drawings for a style of shoes. He said, in a passage which the Court of Appeal adopted with approval in the same case (see pp 129, 138):
- I will take the two items (the handle and the case) in reverse order and begin with the case. In my judgment the episode concerning Fulton's registered design of the Miniflat case means that, by the time that Grant Barnett began to import the 6F Ultra Compact, it did have reason to believe that the case was an infringement of Fulton's design right in the Miniflat case. I have described the facts earlier: see paragraphs 23 and 90. Marks & Spencer, at a time when they were contemplating engaging Grant Barnett as a second supplier of ladies' flat folding compact umbrellas, had told Mr Thomas or Mr Hewitt that Fulton had a registered design for the Miniflat case. Mr Thomas and Mr Hewitt, with the assistance of Grant Barnett's solicitors, obtained details of the registration, and realised that it was very similar to the case for which Grant Barnett had placed an order with Ming San (the case in which it had ordered the 6F Ultra Compact to be supplied). Mr Hewitt therefore instructed Ming San to make the small change to the design of the case which resulted in it having one seam along the bottom of the case instead of the two seams which had been on the case which he had originally ordered.
- In my judgment those facts are sufficient to establish that Grant Barnett had reason to believe that the 6F Ultra Compact case was an article which infringed Fulton's design right in the Miniflat case. Mr Hewitt obviously realised that the two cases were substantially similar. That was why he instructed Ming San to make the change to the seams at the bottom of the case. It was a minor change, and if the two cases were sufficiently similar before the change for it to be possible to say that the 6F Ultra Compact case was made substantially to the design of the Miniflat case (see section 226(2)), they were still sufficiently similar after the change for it to be possible to say the same thing. The change was not significant enough to make any difference in that respect. Further, as regards copying Mr Hewitt knew then everything which I know now and which has led me to infer that, on the balance of probabilities, the 6F Ultra Compact case was copied, directly or indirectly, from Fulton's Miniflat case. If my conclusion on that point is correct (which I must assume it to be), it seems to me to follow that Mr Hewitt, and thus Grant Barnett, had reason to believe that the 6F Ultra Compact case was copied from the Miniflat case.
- In my judgment it follows that all the importations by Grant Barnett of the 6F Ultra Compact, and all Grant Barnett's subsequent dealings with it, were, as respects the case in which it was contained, infringements of Fulton's design right in the Miniflat case.
- The position may, however, be different as respects the handle. Two questions arise. First, did Grant Barnett at any time have reason to believe that the 6F Ultra Compact handle infringed Fulton's design right in the Flat Company handle? Second, if it did, when did it begin to have reason to believe that? In the case of the handle there is nothing equivalent to Grant Barnett's discovering about Fulton's registered design for the Miniflat case. It did emerge from the evidence that, in Grant Barnett's premises, there was a defective model of the Flat Compact. It seems that Marks & Spencer had intended to return it to Fulton, but by mistake returned it to Grant Barnett instead. Mr Arnold suggested (only faintly, I think), that because this umbrella, with the Flat Compact handle on it, was in the possession of Grant Barnett, therefore Grant Barnett had reason to believe that the handle of its 6F Ultra Compact infringed the design right in the Flat Compact handle. This presupposes that, whenever a competitor's umbrella came into Grant Barnett's possession by some accidental means, Grant Barnett ought to have scrutinised all the parts of it to check whether any of Grant Barnett's own products might be in breach of the competitor's design rights. This is wholly unrealistic, and I do not accept the argument.
- However, the authorities establish that a person can come to have reason to believe that he is infringing someone else's copyright or design right if the other person writes to him and tells him so. Commonly this happens in the form of a solicitors' letter before action. LA Gear (supra) was an example of a solicitors' letter giving the defendant reason to believe that it was infringing the plaintiff's copyright. Other examples are Monsoon Ltd v India Imports of Rhode Island Ltd [1993] FSR 486, and ZYX Music GmbH v King [1997] CMLR 318.
- The result of the foregoing is that the question of whether Grant Barnett had reason to believe that the handle on the 6F Ultra Compact infringed Fulton's design right or not, and, if it did, the further question of when Grant Barnett came to have reason to believe that, depend on what Grant Barnett was told (and when it was told it) in letters from Fulton's solicitors or in the pleadings in this action. There is a further dispute as to whether the 'reason to believe', which is necessary to give grounds for relief in an action, can be provided by a communication from the claimant after the action has been commenced. I will consider that dispute later, but I begin by examining what Grant Barnett was told as the case progressed.
- There was no letter before action. The first communication which Grant Barnett received from Fulton or its solicitors was a letter of 3 April 1998 from Fulton's solicitor. The letter enclosed a writ, issued the day before, seeking relief. Both the letter and the writ were expressed in very wide terms which Fulton has now abandoned. Both complained about the design of the 6F Ultra Compact umbrella generally, which was alleged to infringe design right claimed by Fulton in the whole design of the Miniflat, the Flat Compact, and the umbrella which Fulton supplied to Bhs. Neither the letter nor the writ made any specific mention of the handle. So neither the letter nor the writ gave Grant Barnett any reason to believe that the handles fitted on the 6F Ultra Compact umbrellas which it was importing were by themselves infringing articles.
- A statement of claim was served on 30 June 1998. It pleaded that Fulton's relevant umbrellas (the Miniflat, the Flat Compact, and the Bhs umbrella) and each part of them, except for 'standard bought-in items', had all been designed by Mr Fulton personally. It did at one point refer to the handle as a subject of design right claimed by Fulton, but only as one of a long list of component parts of the umbrellas. At that stage Fulton was asserting that it owned design rights in all of those listed parts, and that Grant Barnett was infringing the design rights. It has now vastly reduced the scope of what it was alleging in that pleading. In my view the statement of claim was too general, and the reference to the handle was too much buried in a mass of other items (most of which are now seen to have been irrelevancies), for Fulton to be able to assert with any conviction that the pleading gave Grant Barnett reason to believe that the handles on its umbrellas were infringing articles.
- On 27 July 1998 Fulton, pursuant to an order of Pumfrey J, served a substituted statement of claim. It is the present statement of claim, and for the first time it focused attention on the Miniflat case and the handles of the Flat Compact and the Miniflat. Fulton no longer places much reliance on an argument that the 6F Ultra Compact handle was an infringement of design right in the Miniflat handle, but, as I have said, it does argue that the 6F Ultra Compact handle was an infringement of design right in the Flat Compact handle. The important point for present purposes is that the substituted statement of claim was sufficiently precise and limited in its scope to put Grant Barnett on notice that its handles might be infringing articles. The cases show that this did not mean that Grant Barnett immediately had reason to believe that its handles were infringing articles. It should be allowed a period of some two or three weeks to make its own investigations. However, I believe that, once that period had passed from the service of the substituted statement of claim, Grant Barnett did have, as regards the handle, the 'reason to believe' which section 227(1) requires for it to be liable for secondary infringement. I will allow a period of three weeks, as was done in the Monsoon case (supra). That means that the 'reason to believe' arose on 17 August 1998.
- This still leaves one question. Can Fulton claim relief for secondary infringements in the present action (as opposed to claiming relief for them in a new action which it may commence hereafter), when one of the facts which has given rise to them did not exist at the time of the original issue of the writ? That fact was the possession of Grant Barnett of reason to believe that the 6F Ultra Compact handle infringed design right in Fulton's Flat Compact handle. Grant Barnett did not have reason to believe that when it issued the writ on 2 April 1998 and served it on 3 April 1998. It only came to have the reason to believe once a reasonable time (which I am taking as three weeks) had elapsed from the service of the substituted statement of claim.
- I was referred to three cases bearing on this question: Roban Jig & Tool Co Ltd v Taylor [1979] FSR 130, Arrowin Ltd v Trimguard (UK) Ltd [1984] RPC 581, and Vax Appliances Ltd v Hoover PLC [1990] RPC 656. In my view the facts in the first case were so extreme that it does not greatly assist: see to the same effect Mummery J's comments about it in Vax Appliances at page 660. Of the other two cases I respectfully prefer the approach of Mummery J in Vax Appliances to that of Whitford J in Arrowin. Mummery J allowed a counterclaim to be reamended so as to incorporate reliance on a cause of action which did not exist at the time when the writ was originally issued. He said that there was no rule of law against doing that, and that in the particular circumstances it was the more convenient course. In my view the same applies here, particularly after the introduction of the Civil Procedure Rules. Otherwise Fulton could still rely on 'reason to believe' brought about by its substituted statement of claim, but would have to commence a whole new action for the purpose. Why should it have to do that, incurring extra costs and taking up more time, when it can without any prejudice to Grant Barnett raise the argument in the action which it has commenced already?
- I therefore conclude, first, that Grant Barnett's importations and other dealings with the 6F Ultra Compact constituted, from 17 August 1998 onwards but not before, secondary infringements of Fulton's design right in the Flat Compact handle, and, second, that Fulton can claim relief in this present action for those secondary infringements.
- I will welcome, and I request, assistance from counsel as to what remedies are appropriate in the light of this judgment. It seems likely to me that the position could be complicated by the fact that, on the basis of my reasoning, the whole 6F Ultra Compact was not an article which infringed Fulton's design rights. Only the handle and the case of the 6F Ultra Compact were infringing articles, and furthermore they were infringing articles from different dates: from the time of Grant Barnett's first importation as regards the case, but only from importations and other dealings on or after 17 August 1998 as regards the handle. This disparity of dates when infringements began as between case and the handle, coupled with the fact that, as respects all the rest of the umbrella there never was an infringement, may also have repercussions on the operation of section 233(2) (which, where the original acquisition by the defendant was innocent, limits the remedy for secondary infringement to damages equivalent to a reasonable royalty). No doubt counsel will be able to assist me on this.
- There is one final point to make on remedies. In Fulton's statement of claim it requested that it should be awarded additional damages under section 229(3) on account of what it alleged was the flagrant nature of Grant Barnett's infringements of its design rights. I do not believe that the infringements were flagrant at all, and I am not prepared to award additional damages.
| Act, the | The Copyright, Designs and Patents Act 1988 |
| Everwise | Taiwanese company, maker of moulds for umbrella handles, supplier of Fulton |
| Flat Compact | An umbrella marketed by Fulton |
| Fulton | A. Fulton Company Ltd, the claimant in the case. |
| Fulton, Mr | Arnold Fulton, the founder, Chairman and Chief Executive of Fulton |
| Grant Barnett | Grant Barnett & Company Ltd, the defendant in the case |
| Hewitt, Mr | Peter Hewitt, a director of Grant Barnett |
| Ming San | Chinese company, major supplier of umbrellas to Grant Barnett |
| Miniflat | An umbrella marketed by Fulton |
| Miniflat case | The case for holding the Miniflat and the Flat Compact |
| Szu Mao | Chinese company, major supplier of umbrellas to Fulton |
| Thomas, Mr | David Brian Thomas, the Managing Director of Grant Barnett |
| 6F Ultra Compact | An umbrella marketed by Grant Barnett |
Statutory references are to sections of the Act. In this judgment I refer sometimes to 'design right' and at other times to 'unregistered design right'. These are the same thing. The statutory term under section 213 of the Act is 'design right', but 'unregistered design right' is sometimes used in order to distinguish it from the protection accorded to registered designs under the Registered Designs Act 1949.
Overview
The umbrellas, the handles and the cases
The main facts
'When I design new umbrellas, handles or cases I do so by making a series of rough sketches, considering prototypes and giving oral and written instructions, via Patricia Huang, to Szu Mao and Everwise in the Far East.'
I decided that the umbrella case needed to be of clearly rectangular cross section to emphasise the 'flatness' of the umbrella. The cases on the 'Stowaway No.1' and 'No.3' did not really achieve this and so I came up with a new case design for the Miniflat.
I will call the case which Mr Fulton designed in this way 'the Miniflat case'. It should be noted, however, that it was used for the Flat Compact as well as for the Miniflat. The two umbrellas had different handles but the same cases. (For completeness I should qualify what I have said to this extent. The case for the Flat Compact was made of a slightly more expensive material than the case for the Miniflat. However, that is irrelevant for the purposes of this action, since the design of the case was the same for each umbrella.)
The law
213. Design right
(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 any aspect of the shape or configuration (whether internal or external) of the whole or part of an article.
(3) Design right does not subsist in-
(a) a method or principle of construction,
(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 in the design field in question at the time of its creation.
(5) ...
(6) Design right does not subsist unless and until the design has been recorded in a design document or an article has been made to the design.
(7) ...
... the 'designer', in relation to a design, means the person who creates it.
Where... a design is created by an employee in the course of his employment, his employer is the first owner of any design right in the design.
In an action for infringement of design right all such relief by way of damages, injunctions, accounts or otherwise is available to the plaintiff as is available in respect of the infringement of any other property right.
There are some restrictions on this, and in the present case I ought to quote subsections (2) and (3) of section 233, which is headed 'Innocent infringement'.
(2) Where in an action for infringement of design right brought by virtue of section 227 (secondary infringement) a defendant shows that the infringing article was innocently acquired by him or a predecessor in title of his, the only remedy available against him in respect of the infringement is damages not exceeding a reasonable royalty in respect of the act complained of.
(3) In subsection (2) "innocently acquired" means that the person acquiring the article did not know and had no reason to believe that it was an infringing article.
Shape or configuration of articles and parts of articles; aspects of shape and configuration; the significance of the particulars of claim
This means that the proprietor can trim his design right claim to most closely match what he believes the defendant to have taken. The defendant will not know in what the alleged monopoly resides until the letter before action, or more usually, the service of the statement of claim. This means that a plaintiff's pleading has particular importance. It not only puts forward the claim but is likely to be the only statement of what is asserted to be the design right.
At an earlier stage of the present case there was an interim application as a result of which Pumfrey J directed Fulton to amend its pleadings so as to identify with precision which aspects of which articles were contended by it to carry the design rights alleged to have been infringed by Grant Barnett.
Created designs; originality
Commonplace
An important point here is that it does not disqualify the Sienna from design right if Premier [the defendant], having scoured the trade magazines, manages to come up with one or two fairly obscure items which may be said to have a close similarity.
I am also very conscious of the risk that a judge, without design expertise, may underestimate the value or significance of quite small variants within a family of designs. In certain contexts, what may be in quantitative terms a very small shift to a line or an angle or an arc may make the difference between a design working or not working, whether the purpose of the design is functional or aesthetic. In such a case, a 'right' design might not be commonplace because it would have something sufficiently valuable and distinctive about it when compared with the other superficially similar designs already current.
Mr Underhill did not of course have umbrella handles in mind, but what he said seems to me to be very apt in the present context. The only gloss which I would venture to add is that, in my view, for a design not to be commonplace even though it differs from earlier designs in the same field only by small shifts in (for example) lines, angles and arcs, the court does not have to form a view about whether the resulting design 'works' or not. If the designer sets out to create a new and different design I consider that his design may well not be commonplace even if it proves to be a failure in the sense that the purchasing public appears not to like it.
Method or principle of construction
The interface (or 'must fit') exclusion
(3) Design right does not subsist in - (b) features of shape or configuration or 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...
Dr Lawrence submits that this provision prevents design right subsisting in the Miniflat case. I do not agree.
The 'must match' exclusion
Design right does not subsist in - (b) features of shape or configuration of an article which - (ii) are dependent upon the appearance of another article of which the article is intended by the designer to be an integral part.
Dr Lawrence, if I understand her correctly, submits that this exclusion prevents Fulton from asserting design right in the Flat Compact handle. A paragraph in her closing written submissions, under the heading Must-Fit/Must-Match, says this:
Where you have a flat rectangular umbrella in a case, and you wish to put a handle on the umbrella, Mr Thomas's evidence is that you are constrained to choose a flat rectangular handle of cuboid shape.
Surface decoration
Conclusion on subsistence of design right
Ownership of design right
Infringement
226 Primary infringement of design right
(1) the owner of design right in a design has the exclusive right to reproduce the design for commercial purposes -
(a) by making articles to that design...
(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...
(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.
(4) For the purposes of this section reproduction may be direct or indirect...
(5) ...
227 Secondary infringement: importing or dealing with the infringing article
(1) Design right is infringed by a person who, without the licence of the design right owner -
(a) imports into the United Kingdom for commercial purposes, or
(b) has in his possession for commercial purposes, or
(c) sells, lets for hire, or offers or exposes for sale or hire, in the course of a business,
an article which is, and which he knows or has reason to believe is, an infringing article.
(2) ...
228 Meaning of 'infringing article'
(1) in this Part 'infringing article', in relation to a design, shall be construed according to this section.
(2) An article is an infringing article if its making to that design was an infringement of design right in the design.
(3) An article is also an infringing article if -
(a) it has been or is proposed to be imported into the United Kingdom, and
(b) its making to that design in the United Kingdom would have been an infringement of design right in the design...
(4)(5 )(6) ...
Made substantially to the designs?
Copying?
Knowledge that the items were infringing articles?
Reason to believe that the items were infringing articles?
Nevertheless, it seems to me that 'reason to believe' must involve the concept of knowledge of facts from which a reasonable man would arrive at the relevant belief. Facts from which a reasonable man might suspect the relevant conclusion cannot be enough. Moreover, as it seems to me, the phrase does connote the allowance of a period of time to enable the reasonable man to evaluate those facts so as to convert the facts into a reasonable belief.
Remedies
Note 1 The word in the report is ‘unconnected’, but this is plainly a slip for ‘connected’. [Back]