INTELLECTUAL PROPERTY ENTERPRISE COURT
Fetter Lane, London, EC4A 1NL
B e f o r e :
| DKH RETAIL LIMITED
|- and -
|H. YOUNG (OPERATIONS) LIMITED
Jacqueline Reid (instructed by Nabarro LLP) for the Defendant
Hearing dates: 6-7 October 2014
Crown Copyright ©
Judge Hacon :
The designs in issue
"4.1 the front closing and hood and collar arrangement in combination being:
(a) a double layer closing arrangement that has a central zip with flap underneath, both of which run the full length of the gilet including its collar, the top of the underlying flap folded over the zip, the flap being an approximate rectangular strip in shape with rounded corners;
(b) an overlaying placket on the left side which runs the full length of the gilet including its collar; the placket being an approximate rectangular strip in shape;
(c) A hood and collar arrangement which consists of:
(i) a hood which is zipped onto the body of the gilet at the bottom of the collar of the gilet. The zip fastening for the hood is found at the bottom or base edge of the inside of the collar so that the collar of the gilet is a flap which sits externally to the base of the hood. The collar of the gilet being an approximate rectangular strip in shape which is fastened by the front closing central zip as referred to in (a) above;
(ii) with an inner flap covering the zip fastening that connects the hood and the body of the gilet which is an approximate rectangular strip in shape with squared corners; and
(iii) the hood having heavy wide drawstrings which are approximate rectangular shaped flat strips with straight/flat squared off ends, originating from the outer rim of the hood."
The second part was just the hood:
"4.2 the shape and configuration of the hood and collar arrangement in combination as specified at 4.1(c) above."
UK unregistered design rights
Whether DKH relied on 'designs' and the Intellectual Property Act 2014
"(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."
The words in brackets have been deleted by s.1(1) of the Intellectual Property Act 2014 ("the 2014 Act"), to which I will shortly return.
"What is an "aspect of design?: the "visually significant" point
 So I turn to the individual points argued, of which this was the first. UDR can subsist in the "design of any aspect of the shape or configuration (whether internal or external) of the whole or part of an article." This is extremely wideit means that a particular article may and generally will embody a multitude of "designs"as many "aspects" of the whole or part of the article as can be. What the point was of defining "design" in this way I do not know. The same approach is not adopted for ordinary copyright where the work is treated as a whole. But even with this wide definition, there is a limit: there must be an "aspect" of at least a part of the article. What are the limits of that? I put it this way in A. Fulton Co Ltd v Totes Isotoner (UK) Ltd  R.P.C. 16;  EWHCA Civ 1514 at : "The notion conveyed by 'aspect' in the composite phrase is 'discernible' or 'recognisable'".
 Mr Arnold suggested that the limit was more extensiveso as to exclude a "mere twiddle" (see Volumatic v Myriad, unreported April 10, 1995). Sir John Vinelott there settled on the test of "visual significance." That is all right for features of shape provided one remembers that UDR can subsist in an aspect of part of an article. The test does not mean that one can simply forget an aspect of the design of a whole article on the grounds that it is a visually insignificant feature of the design of the whole article. If one focuses on that aspect consisting of the alleged "twiddle" alone it is difficult to see how it can be visually insignificant. That is why I prefer my formulation."
"Subsection (1) limits the protection for trivial features of designs, by making sure that protection does not extend to "any aspect" of the shape or configuration of the whole or part of an article. It is expected that this will reduce the tendency to overstate the breadth of unregistered design right and the uncertainty this creates, particularly in relation to actions before courts."
"For the purpose of this Regulation:
(a) "design" means the appearance of the whole or part of a product resulting from the features of, in particular, the lines, contours, colours, shape, texture and/or materials of the product itself and/or its ornamentation."
Subsistence lack of originality through copying one or more earlier designs
Interface must fit
"(3) Design right does not subsist in
(b) features of shape or configuration of an article which
(i) enable the article to be connected to, or placed in, around or against, another article so that either article may perform a function,"
"This is sometimes referred to as the interface provision. Its original purpose was to prevent the designer of a piece of equipment from using design right to prevent others from making parts which fitted his equipment. As I read it, any features of shape or configuration of an article which meet the interface criteria must be excluded from being considered as part of the design right. Furthermore a feature which meets the interface criteria must be excluded even if it performs some other purpose, for example it is attractive. There is also nothing in the provision which requires the feature to be the only one which would achieve the proper interface. If a number of designs are possible each of which enables the two articles to be fitted together in a way which allowed one or other or both to perform its function, each falls within the statutory exclusion."
Method or principle of construction
Subsistence commonplace design
"(4) A design is not "original" if it is commonplace in the design field in question at the time of its creation."
This has been amended by s.1(3) of the 2014 Act so that to be denied originality the design must have been commonplace in a qualifying country within the meaning of s.217(3) of the 1988 Act. However the amendment only applies to designs created after 1 October 2014 (s.1(4)) so the change has no application to these proceedings.
"Any design which is trite, trivial, common-or-garden, hackneyed or of the type which would excite no particular attention in those in the relevant art is likely to be commonplace."
This characterisation was twice referred to by Mummery LJ (with whom Simon Brown LJ and Sir Christopher Slade agreed) in Farmers Build Ltd v Carier Bulk Materials Handling Ltd  RPC 13 (at pp. 477 and 479) and apparently although not explicitly endorsed. Mummery LJ also said (at p. 479):
"Laddie J was right not to attempt a definition of "commonplace" in the Ocular case. Every attempt to do so is doomed to failure. The only outcome is a list of different words dredged up from the dictionaries. The words in the dictionary list have different overtones according to context. It may be positively misleading to substitute one of those dictionary words for the word used by Parliament.
It is more instructive for the court to look wider for indications of the purpose of the provision to be construed and, in particular, to examine the context in which the relevant provision was enacted."
"(1) It should compare the design of the article in which design right is claimed with the design of other articles in the same field, including the alleged infringing article, as at the time of its creation.
(2) The court must be satisfied that the design for which protection is claimed has not simply been copied (e.g. like a photocopy) from the design of an earlier article. It must not forget that, in the field of designs of functional articles, one design may be very similar to, or even identical with, another design and yet not be a copy: it may be an original and independent shape and configuration coincidentally the same or similar. If, however, the court is satisfied that it has been slavishly copied from an earlier design, it is not an "original" design in the "copyright sense" and the "commonplace" issue does not arise.
(3) If the court is satisfied that the design has not been copied from an earlier design, then it is "original" in the "copyright sense". The court then has to decide whether it is "commonplace". For that purpose it is necessary to 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 unconnected with the parties.
(4) This comparative exercise must be conducted objectively and in the light of the evidence, including evidence from experts in the relevant field pointing out the similarities and the differences, and explaining the significance of them. In the end, however, it is for the court and not for the witnesses, expert or otherwise, to decide whether the design is commonplace. That judgment must be one of fact and degree according to the evidence in each particular case. No amount of guidance given in this or in any other judgment can provide the court with the answer to the particular case. The closer the similarity of the various designs to each other, the more likely it is that the designs are commonplace, especially if there is no causal link, such as copying, which accounts for the resemblance of the compared designs. If a number of designers working independently of one another in the same field produce very similar designs by coincidence the most likely explanation of the similarities is that there is only one way of designing that article. In those circumstances the design in question can fairly and reasonably be described as "commonplace". It would be a good reason for withholding the exclusive right to prevent the copying in the case of a design that, whether it has been copied or not, it is bound to be substantially similar to other designs in the same field.
(5) If, however, there are aspects of the plaintiff's design of the article which are not to be found in any other design in the field in question, and those aspects are found in the defendant's design, the court would be entitled to conclude that the design in question was not "commonplace" and that there was good reason for treating it as protected from misappropriation during the limited period laid down in the 1988 Act."
" what really matters is what prior designs the experts are able to identify and how much those designs are shown to be current in the thinking of designers in the field at the time of creation of the designs."
"This does not mean that a design made up of features which, individually, are commonplace is necessarily itself commonplace. A new and exciting design can be produced from the most trite of ingredients. But to secure protection, the combination must itself not be commonplace. In many cases the run of the mill combination of well known features will produce a combination which is itself commonplace."
The features identified in paras. 4.1(a) and (b) of the Re-Amended Particulars of Claim were present in the Abercrombie & Fitch gilet and were therefore commonplace.
The features of para. 4.1(c)(i) were sub-divided as follows:
"A hood which is zipped on to the body of the gilet at the bottom of the collar of the gilet" was not present in the Abercrombie & Fitch gilet because there is no hood. Mr Silverman said that zip-off hoods were however commonplace.
"The zip fastening for the hood is found at the bottom or base edge of the inside of the collar so that the collar of the gilet is a flap which sits externally to the base of the hood" was a feature that was neither known nor commonplace at the relevant time.
"The collar of the gilet being an approximate rectangular strip in shape which is fastened by the front closing central zip as referred to in (a) above" was commonplace because it featured in the Abercrombie & Fitch gilet.
The features in para. 4.1(c)(ii), the inner flap covering the zip which connects the hood and body, were not present in any prior art of which Mr Silverman was aware but he said that it lacks interest or originality.
The features in para. 4.1(c)(iii) were commonplace. They were present in five items of prior art which, in Mr Silverman's view, would have been known by designers in the clothing field.
"I have not identified an item which pre-dates the Superdry "Academy" gilet and which incorporates the exact combination of all of the features. However, I consider that all of the features, when put together, would not evoke any interest. This is due to the fact that, individually, the features serve a technical function and/or are commonplace. The combination of design features relied upon by Superdry are bound to be substantially similar to other designs in the clothing and clothing design field."
Substantially to the First and/or Second Designs the law
" What must be established is that the design in which design right subsists has been copied so as to produce "articles exactly or substantially to that design". Two points arise. First, although the Act allows design right to subsist in (and be claimed for) part of an article, the definition of reproduction speaks only of making "articles". There is, therefore, a linguistic mismatch between subsistence of design right and the right that it confers. But it must obviously have been Parliament's intention that if design right subsisted in part of an article (e.g. the teapot spout) the right would be infringed by incorporating a copy of that spout in another teapot, even if the infringing spout is not itself a whole article. Secondly, even if the design has been copied, the infringing article must be produced "exactly or substantially" to the copied design. Mere similarity is not enough.
 In C&H Engineering v F Klucznik & Sons Ltd (No.1)  F.S.R. 421 Ch D Aldous J. said:"Under section 226 there will only be infringement if the design is copied so as to produce articles exactly or substantially to the design. Thus the test for infringement requires the alleged infringing article or articles be compared with the document or article embodying the design. Thereafter the court must decide whether copying took place and, if so, whether the alleged infringing article is made exactly to the design or substantially to that design. Whether or not the alleged infringing article is made substantially to the plaintiff's design must be an objective test to be decided through the eyes of the person to whom the design is directed."
 Although, at least in theory, two separate criteria must be satisfied viz. copying and making articles exactly or substantially to the copied design, it is not easy to conceive of real facts (absent an incompetent copyist) in which a design is copied without the copy being made exactly or substantially to the copied design. In practice, if copying is established, it is highly likely that the infringing article will have been made exactly or substantially to the protected design. If copying is not established, then whether the article is the same or substantially the same as the protected design does not matter. However, similarity in design may allow an inference of copying to be drawn."
Substantially to the First and/or Second Designs assessment
(a) The collar of the Academy gilet is greater in height towards the front, whereas the collar of the Glaisdale gilet is approximately constant in height.
(b) The placket of the Glaisdale gilet is wider than that of the Academy gilet.
(c) The Glaisdale placket has four vertical stitched lines running the length of placket. The Academy gilet has no such stitching.
(d) The Glaisdale placket is secured to the body of the gilet by press studs whereas the Academy gilet uses buttons a visible difference.
(e) The corner of the Academy chin guard is square, whereas its equivalent in the Glaisdale gilet is rounded.
(f) The Glaisdale gilet has a 3cm wide white tape secured to the inside front of the hood which is not present on the Academy hood.
Ms Reid in her skeleton argument added to the list, referring to edged stitching on the Academy placket and stitching along the collar of the Academy gilet. These are minor features and I can see why Mr Silverman did not refer to them.
Community unregistered design right
Not designs within the meaning of art.3(a)
Ownership of the Community designs
"1. Unless Articles 28, 29, 30, 31 and 32 provide otherwise, a Community design as an object of property shall be dealt with in its entirety, and for the whole area of the Community, as a national design right of the Member State in which:(a) the holder has his seat or his domicile on the relevant date; or(b) where point (a) does no apply, the holder has an establishment on the relevant date."
None of arts.28-32 apply to the present case.
"223 Prospective ownership of design right
(1) Where by an agreement made in relation to future design right, and signed by or on behalf of the prospective owner of the design right, the prospective owner purports to assign the future design right (wholly or partially) to another person, then if, on the right coming into existence, the assignee or another person claiming under him would be entitled as against all other persons to require the right to be vested in him, the right shall vest in him by virtue of this section.
(2) In this section"future design right" means design right which will or may come into existence in respect of a future design or class of designs or on the occurrence of a future event; and"prospective owner" shall be construed accordingly, and includes a person who is prospectively entitled to design right by virtue of such an agreement as is mentioned in subsection (1)."
1.1 In consideration of the sum of £1 (receipt of which the Designer hereby acknowledges), the Designer assigns to the Assignee, with full title guarantee for the whole term of such rights together with any and all reversions, extensions or renewals, the following rights throughout the world ("the Rights"):1.1.2 any design right (and all other rights in the nature of design right) whether registered or unregistered subsisting in the Works and the Future Works and in all preliminary drafts or earlier versions of the Works and the Future Works;1.1.3 all other intellectual property rights of whatever nature, whether now known or created in the future, to which the Designer is now or may at any time after the date of this assignment be entitled by virtue of any of the laws in force in any part of the world, in and to the Works and the Future Works and in all preliminary drafts or earlier versions of the Works and the Future Works;
"The Works" and "the Future Works" are defined in recitals (A) and (B):
"(A) Since 18th June 2001 the Designer has created original clothing designs which have subsequently been used by the Assignee (together "the Works").
(B) The Designer has agreed with the Assignee to create further clothing designs for the Assignee (together "the Future Works")."
Features solely dictated by technical function
"1. A Community design shall not subsist in features of appearance of a product which are solely dictated by its technical function."
" It follows from the above that art.8(1) CDR denies protection to those features of a product's appearance that were chosen exclusively for the purpose of designing a product that performs its function, as opposed to features that were chosen, at least to some degree, for the purpose of enhancing the product's visual appearance. It goes without saying that these matters must be assessed objectively: it is not necessary to determine what actually went on in the designer's mind when the design was being developed. The matter must be assessed from the standpoint of a reasonable observer who looks at the design and asks himself whether anything other than purely functional considerations could have been relevant when a specific feature was chosen."
Designs of interconnections
"2. A Community design shall not subsist in features of appearance of a product which must necessarily be reproduced in their exact form and dimensions in order to permit the product in which the design is incorporated or to which it is applied to be mechanically connected to or placed in, around or against another product so that either product may perform its function."
" a product which is composed of multiple components which can be replaced permitting disassembly and re-assembly of the product."
"2. A design applied to or incorporated in a product which constitutes a component part of a complex product shall only be considered to be new and to have individual character:
(a) if the component part, once it has been incorporated into the complex product, remains visible during normal use of the latter; and
(b) to the extent that those visible features of the component part fulfil in themselves the requirements as to novelty and individual character."
The consequence of a component part of a complex product lacking novelty and individual character is that it will not be protected by a Community design see art.4(1).
"The gilet and the hood are component parts of a complex product comprising together the hooded gilet."
It is also said that certain features of the hood and gilet are not visible during normal use and therefore lack novelty and individual character.
Novelty and individual character
"Article 4 Requirements for protection
1. A design shall be protected by a Community design to the extent that it is new and has individual character.
Article 6 Individual character
1. A design shall be considered to have individual character if the overall impression it produces on the informed user differs from the overall impression produced on such a user by any design which has been made available to the public:(a) in the case of an unregistered Community design, before the date on which the design for which protection is claimed has first been made available to the public;
2. In assessing individual character, the degree of freedom of the designer in developing the design shall be taken into consideration."
" article 6 of Regulation No 6/2002 must be interpreted as meaning that, in order for a design to be considered to have individual character, the overall impression which that design produces on the informed user must be different from that produced on such a user not by a combination of features taken in isolation and drawn from a number of earlier designs, but by one or more earlier designs, taken individually."
"Article 10 Scope of protection
1. The scope of the protection conferred by a Community design shall include any design which does not produce on the informed user a different overall impression.
2. In assessing the scope of protection, the degree of freedom of the designer in developing his design shall be taken into consideration."
" As Jacob L.J. observed in Procter & Gamble at  EWCA 936 at :
"The most important things in a case about registered designs are:
(i) The registered design;
(ii) The accused object;
(iii) The prior art.
And the most important thing about each of these is what they look like."
 I would add that the two designs must therefore be considered globally and, as one would expect, the informed user will attach less significance to those features which form part of the design corpus and correspondingly greater significance to those features which do not. So also, the informed user will attach particular importance to features in respect of which the designer had a great deal of design freedom. The analysis is not limited to these considerations, however, for a global assessment also requires the designs to be considered having regard to the way in which the products to which the designs are intended to be applied are used, with some features having greater prominence than others, perhaps because they are more visible."
"Article 13 Damages
1. Member States shall ensure that the competent judicial authorities, on application of the injured party, order the infringer who knowingly, or with reasonable grounds to know, engaged in an infringing activity, to pay the rightholder damages appropriate to the actual prejudice suffered by him/her as a result of the infringement.
When the judicial authorities set the damages:
(a) they shall take into account all appropriate aspects, such as the negative economic consequences, including lost profits, which the injured party has suffered, any unfair profits made by the infringer and, in appropriate cases, elements other than economic factors, such as the moral prejudice caused to the rightholder by the infringement;
(b) as an alternative to (a), they may, in appropriate cases, set the damages as a lump sum on the basis of elements such as at least the amount of royalties or fees which would have been due if the infringer had requested authorisation to use the intellectual property right in question.