England and Wales High Court (Patents Court) Decisions

IN THE HIGH COURT OF JUSTICE
CHANCERY DIVISION

		20/10/98

In this action, the Plaintiff alleges that the Defendants have severally or jointly infringed certain design rights they claim, relating to a baby or child safety barrier which may be installed between the jambs of a door or the wall and banisters.

Baby barriers of varying styles have been on the market for many years^[1] well before 1st August 1989 (the relevant commencement date for design right protection under the Copyright, Design and Patents Act 1988).

Generally speaking such barriers are made up of a number of vertical tubular metal elements arranged in a rectangular frame having at the four corners of the frame horizontally adjustable extendible buffers or rubber coated circular fee (spindle heads) fixed on threaded bars known as spindles. Nuts are located to run along the spindles to allow the feet to be secured in position. In order to ensure such safety barriers remain secure against impact, the spindle heads were generally designed to fit into wall cups fixed onto the wall or door jambs. Such safety barriers commonly were divided into a hinged part or gate and a fixed part, the fixed part being secured when the gate was open by three of the four horizontally extending rubber feet.

The hinged gate part of the barrier is opened by means of a handle which according to British Standard BS 4125 requirements if the handle is a lever type device is to be "placed on top of the barrier and shall be operated upwards to unlock" i.e. it has to be lifted. In practice how the gate unlocking device operates is that positioned on the upper spindle of the gate part of the barrier between the rubber foot and the frame itself is what is called a "spindle housing" in which there is located on each side a cam track into which two small plastic lugs on the inner part of the front of the handle are fixed. Lifting of the handle will pull the spindle housing backwards towards the barrier and thereby releasing the top foot from the wall or door.

The Plaintiff who is a Danish company has been in the business of designing and manufacturing baby barriers since the middle '60s. Such barriers are sold in the UK under the name "Danamic".

The particular baby barrier parts of which the Plaintiff alleges that the First Defendant has copied is known as a pressure barrier because it does not require the feet or spindle heads to be inserted into wall cups. The baby barrier which is alleged to have been copied is designated model number 5809 and was first sold on the 2nd December 1994 with the earlier handle mechanism of model 5807 (which in turn was first sold on the 17th January 1994). Subsequently the handle mechanism alleged to be copied was incorporated into model 5809 and was first sold on the 31st May 1995.

Both the handle mechanism of the 5807 and the 5809 function in the same way, namely there is a push button on the outer face of one side of the handle which when pressed operates a spring loaded "cam" which is located in a "cam housing". This allows the handle to be lifted. When the handle is returned to its horizontal position the spring biased cam reengages the push button to keep the handle in the closed position. However as can be seen from an inspection of the cam housing of the 5807 and that of 5809 (as depicted in Exhibits P1 and P4) there are significant differences in both the shape and configuration of the two cam housings as will be further explained below.

It is important to note that apart from the Brevi handle mechanism no other baby gate on the market has a handle mechanism with a cam housing albeit other handle mechanisms do have a push button on the handle.

The handle mechanism comprises the following component parts the subject of complaint in which the Plaintiff claims design rights viz. the handle, spindle housing, cam housing, spring, cam, push button and the two holes bar. In addition to the handle mechanism the plaintiff complains about the manner in which the gate part of the barrier is hinged. As an added safety feature of the Baby Dan gate even when the push button has been pressed and the handle lifted the gate cannot be opened unless the whole gate is lifted about 1cm upwards. This is due to a combination of the design of the uppermost hinge which has a groove arrangement running in the plane of the gate in the upper hinge and the keeper at the base of the gate.

The component parts of the hinge mechanism of which complaint is made and in which the plaintiff claims design rights are the uppermost hinge support, the uppermost hinge which comprises an upper hinge and lower hinge and the lowermost hinge which is in the form of a hook. Finally the Plaintiff complains about the spindle head, spindle and spindle retainer.

The First Defendant is an Italian company who design and produce a large range of baby products as shown in their catalogue^[2]. Between the 25th June 1991 and the 16th January 1997 the First Defendant was the distributor in Italy of certain of the Plaintiff's products including their pressure safety barriers (model Nos. 5801, 5807 and 5809 respectively) which were marketed under the name "Barriera Dinamica". The First Defendant designed and manufactures the Brevi safety barrier the subject of this action, which was exhibited at the Harrogate Pram & Nursery Fair 1997.

The Second Defendant is a UK company run by a Mr. Rodney Cottrell and has since 1990 been the UK distributors of the First Defendant's products including the safety barrier the subject of this action which is purchased ex factory price from the First Defendant.

The First Defendant denies that it either imports or sells its safety barrier in the UK and further denies that it acts in concert with the Second Defendant in the importation and/or sale of such barriers in the UK in a manner to make them jointly liable.

Both Defendants deny as secondary infringers that they either knew or had reason to believe the Brevi barrier was an infringing article.

Issues

The following issues call for decision:-

(1) What design rights does the Plaintiff possess

(2) Have the Defendants (or either of them) infringed such design rights and if so what rights have been infringed?

(1) What rights does the Plaintiff possess?

This question can be divided into two parts, firstly what design rights subsist in the Plaintiff's safety barrier and secondly whether the Plaintiff owns such rights.

(A) Subsistence of Design Rights

(i) The Law

Part 3 of the Copyright, Designs and Patents Act 1988 which came into force on the 1st August 1989 has created a new set of unregistered design rights which are intended to replace copyright protection for drawings of functional articles which subsisted under the Copyright Act 1956. So far as spare parts were concerned such earlier rights were qualified in that the House of Lords in British Leyland v Armstrong (1986) AC 577 held such rights could not be enforced by the copyright owner of the drawing of the original part.

Section 213 of the 1988 Act provides as follows:

(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 purpose 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) Design right does not subsist in a design which was so recorded, or to which an article was made, before the commencement of this Part.

A central question in this case is precisely what are the design rights which are claimed to subsist in view of section 213(3)(b)(i).

Mr. Baldwin for the Defendants contends that each of the parts of the Baby Dan safety barrier relied upon (referred to above and set out in Schedule A of the Amended Statement of Claim) is an article in itself for the purposes of section 213(3)(b)(i), relying on a decision of Mr. Justice Laddie in Electronic Techniques (Anglia) Limited v Critchley Components Limited (1997) FSR 401 at 417 to 419. Hence no design rights subsist in those features of shape or configuration of each component or part which enable the part to be connected to, placed in, around or against another part to make up the Plaintiff's safety barrier.

If Mr. Baldwin is right it would have the strange result that any larger article made up of component parts (e.g. the wing of an aircraft as instanced by Mr. Birss for the Plaintiff) would effectively have no design right protection.

In Ocular Sciences Ltd v Aspect Vision Care Ltd. (1997) RPC 289 at 422 in considering the effect of section 213(2) Mr. Justice Laddies states:

The proprietor can choose to assert design right in the whole or any part of his product. If the right is said to reside in the design of a teapot, this can mean that it resides in design of the whole pot, or in a part such as the spout, the handle or the lid, or indeed in a part of the lid. This means that the proprietor can trim his design right claim to most closely match what he believes the defendants have taken".

This view accords with section 260(2) of the 1988 Act when the clear intention of the Act is that design rights will subsist both in the component parts of a kit as well as in the assembled article.

The Electronic Techniques case was a case where Mr. Justice Laddie refused to strike out as being demurrable a plea that the defendants had an arguable defence that the "must fit" provisions apply to two interfitting articles carrying the features which were assembled together to form the whole or part of another larger article - the plaintiff contended that the "must fit" provisions applied to the whole article and not parts of it.

Giving a purposive construction to the "must fit" provisions, which is to deny protection to articles such as spare parts, I consider Mr. Birss' approach to the construction of section 213 is the correct one, namely that he is entitled to rely on design rights relating to various parts of a baby barrier as part of a larger article namely the baby barrier and hence the effect of section 213(3)(b)(i) is not to exclude the shape or configuration of the various parts necessary to enable such parts to be assembled.

Alternatively and in addition to such design rights, I consider there will subsist separate design rights in those component parts as articles per se. In this case the shape or configuration of the various parts are circumscribed by the "must fit" provisions, so that the subsistence of design rights in such parts per se if they subsist at all will be of a considerably narrower scope.

The foregoing interpretation of the Act conforms to the provisions of section 226 and 227 (the infringement sections).

Section 226 provides:

(i) 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, or

(b) by making a design document recording the design for the purpose of enabling such articles to be made.

(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, and references in this Part to making articles to a design shall be construed accordingly.

Section 227 which is cited later in this Judgment relates to secondary infringement by importation and dealing with infringing articles. Infringing articles are defined in section 228(2) as ones that their making to that design would be an infringement of design right in the design.

If the design rights which are claimed relate to a part of a larger article and the alleged infringer is making (importing or dealing in) such larger articles then section 226(2) provides that such larger articles will infringe such design rights if the design (as defined in section 213(2) - i.e. the shape or configuration of part of an article) has been copied so as to produce articles exactly or substantially to that design - "that design" by definition being that part of the larger article the subject of the design.

On the other hand if the alleged infringer is making (importing or dealing in) a component part of the larger article (e.g. as a spare part) then the only design which the Plaintiff can rely upon as having been copied so as to produce articles exactly or substantially to the design is the design (i.e. shape or configuration) of the component part in so far as section 213(3)(b)(i) or (ii) has not excluded such shape or configuration.

Reference was made to C & H Engineering v F. Klucznik & Sons Ltd. (1992) FSR 421 (the pig fender case). I do not believe it sheds any light on the proper construction of section 213 because it does not seem to have been argued that the design which had been copied lay in the shape or configuration of only a part of the pig fender, namely the metal roll bar on the tope of an otherwise commonplace pig fender^[3].

Configuration

In addition to the shape or configuration of the various component parts (itemised in Schedule A of the Amended Statement of Claim) either as parts of the Plaintiff's safety barrier or as articles per se, Mr. Birss contends that the relative positioning of certain of the parts (e.g. the spindle housing and push button) is an aspect of the configuration of the safety barrier.

I do not believe the word configuration can be given such a broad meaning - to do so would be contrary to section 213(3)(a) which specifically excludes from design right protection a method or principle of construction.

Configuration can be considered in the context of the Act as some form of arrangement of elements e.g. the ribbing arrangement of a hot water bottle (see Cow v Cannon (1959) RPC 240 at 243-244: 347 at 350 (C.A)).

(ii) The Facts

Mr Baldwin challenges the originality of certain of the component parts of the Plaintiff's safety barrier relied upon on the grounds that they originated not from Baby Dan model 5809 but from earlier model Nos. 5801 and 5807. Mr. Baldwin also criticised as being unreliable evidence given by Mr. Jesper Andersen who is currently export manager and co-owner with his father of the Plaintiff company. Mr. Andersen who is Danish gave his evidence in English without an interpreter and there were occasions when there were obvious language difficulties. However I believe Mr. Andersen was able and did understand the questions he was asked - indeed an interpreter was at hand should the need have arisen. Mr. Andersen's evidence was divided into his statement as a witness of fact and his statement as an expert.

Mr. Baldwin I think rightly criticised Mr. Andersen on his reliability as to particular dates as to when various items were redesigned and I have not relied on such evidence unless corroborated or not challenged.

Mr Baldwin also criticised Mr. Andersen's approach when considering the similarities of the Plaintiff's earlier parts with the parts relied upon on the one hand and the similarities or differences between the parts relied upon and the Brevi parts. Certainly there were occasions (e.g. his comparison of the various versions of the upper hinge - see Day 2/141-143) where he appeared on the one hand to be merely emphasising the difference between the earlier and later parts of the Plaintiff's barrier whilst on the other hand he sought to emphasise the similarities of the Brevi parts with the Plaintiff's. I have not relied upon his evidence with regard to such matters which at the end of the day is a matter for the court once it has been instructed as to the relevant features.

Mr. Baldwin also drew attention to Mr. Andersen's evidence (Day 1/43 lines 19-25) that drawings preceded prototypes whereas what was pleaded was that prototypes preceded drawings. In fact as was made clear in Mr. Andersen's first Witness Statement (Bundle 2 page 4 paras 7 to 9) plastic components were made up from CAD drawings provided by the Plaintiff to a tool-maker. The whole process of producing sketches, drawings, prototypes, modified drawings was an organic process in which both he and his father were instrumental in the whole design process. Given that for the purposes of design right protection it does not matter whether the design was first embodied in a drawing or an article provided it was done subsequent to the 1st August 1989 (see section 213(6)) I do not believe Mr. Baldwin's questioning which came first has any bearing on the issues I have to decide. Provided that the various component parts relied upon were all designed after the 1st August 1989, the relevant date with regard to the term of the design right will be when baby safety barriers embodying such parts were first made available for sale or hire (see section 216(1)(b),(2)).

Each of the component parts relied upon, together with their dates of when they were first made available for sale are set out below where questions as to the originality of the design of such parts is also dealt with.

(B) Title to Design Rights

By reason of section 215(3) of the 1988 Act, 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.

Mr Andersen was not challenged that both he and his father were employees of the Plaintiff company. In cross examination Mr. Andersen accepted he was not responsible for the CAD drawings but did take part in the initial design (making metal prototypes) and testing stage (see Day 1 page 41 line 2 to 43 line 26). No challenge was made that Mr. Andersen's father was not responsible for the design of the various parts relied upon.

So far as design rights subsist in the various parts relied upon, I consider that the Plaintiff company owns such rights.

(2) Infringement of Design Rights

Design right is infringed by the making of articles exactly or substantially to the design (i.e. by copying of the plaintiff's design) (section 226(supra)). The test is to be determined through the eyes of the person to whom the design is directed - in this case where parts of a barrier gate are under consideration, such persons would include those persons interested in the design of such gates. Where differences between the design in question and earlier designs not relied upon are small so that the degree of originality is small, the Plaintiff can only succeed if the differences between the Defendant's design and the design complained of is closer than that of the earlier design (see Ocular Sciences at 424/14).

As the articles in question in this case were made in Italy and imported into this country, only secondary infringement under sections 227 and 228 can be relied upon.

By section 227(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 for 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.

Section 228 defines an infringing article as

(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 ...

Thus the issues to be decided are as follows:

(i) Did the First Defendant copy the Plaintiff's designs

(ii)(a) If the article relied upon is the safety barrier, which if any of the parts complained of is the same or substantially the same design as those parts relied upon?

(b) If the article relied upon is the component part which if any part in the same or substantially the same design as the Plaintiff's parts?

(iii) Did the First Defendant import, sell or offer for sale the articles complained of?

(iv) Did the First Defendant know or have reason to believe such articles were infringing articles?

(v) Did the Second Defendant know or have reason to believe such articles were infringing articles?

(vi) Are the First and Second Defendants joint tortfeasors?

(i) Did the First Defendants copy the Plaintiff's design?

The evidence adduced by the Defendants as to the origin of their barrier gate was firstly that of Dr. Mauro Brevi, managing director of the First Defendant who stated that in late 1994 he decided Brevi should make its own pressure gate rather than continuing to purchase them from Baby Dan. Accordingly he states he instructed Brevi's designer Fabio Pagani to design their own gate specifically telling him he did not want him to copy the Baby Dan gates and that it had to comply with British Standard BS 4125. Mr. Pagani who made two Witness Statements and gave evidence through an interpreter stated in his supplementary statement that the first step he took was in October 1994 when he drew the first version of the frame of the gate onto which all other component parts would be mounted (see Bundle 7/213). He goes on to explain that this gate had square bars (whilst the Brevi barrier has cylindrical ones).

In the course of his oral evidence he was asked about this drawing that it appeared to be the drawing of a Baby Dan frame (see Day 3/300 16-24, 302 21-23). In re-examination (Day 3/355) he explained for the first time that when he developed this drawing he had in mind wooden bars. On further examination (Day 3/359) Mr. Pagani accepted the drawing depicted a metal frame, not a wooden frame but that he was trying to make it look similar to wood.

Making every allowance for interpretation and language difficulties, I found Mr. Pagni's evidence unsatisfactory and unreliable when it came to explaining how the working parts of the Brevi gate were designed.

Mr. Pagani states that he did not copy any part of any Baby Dan gate. Whilst I accept that Mr. Pagani did not copy the general external appearance of the Baby Dan barrier, I do not accept he did not copy functional parts of the Baby Dan barrier. By way of example, it is beyond doubt that Mr. Pagani in the course of designing the spindle retainer, drew the Plaintiffs' spindle retainer for its 5807 model (see Drawing Bundle 5 p.52). Mr. Pagani was cross examined about this drawing (Day 3 page 312) where he states

Q. It is right is it not Mr. Pagani that this drawing at page 52 is a drawing of the Baby Dan 5807 piece?

A. I do not know what it is, the 5807. The only thing I know is that I must create a square piece which must fit into a cylindrical part.

In fact it transpires that rather than adopting the 5807 model it is clear that the Brevi gate adopted the later 5809 spindle retainer which was longer and had a conical indent at one end. The purpose of this indent was to enable the nut on the spindle to be fixed against the end of the spindle retainer without having to use a second locking nut. Brevi in their instructions in spite of using two locking nuts (Bundle 6 pages 10 to 12) have adopted the Plaintiff's conical indent which Mr. Jackson, the Defendants' expert, agreed would have no function on the Brevi gate and would be more difficult to produce.

No other baby barriers have such a spindle retainer and I have no doubt Mr. Pagani copied not only the earlier retainer but more significantly the 5809 retainer.

Likewise there was no satisfactory explanation of the origin of a number of features in the Brevi gate which are unique to the Plaintiff's gate, for example:

(1) the substantial identity of the Brevi cam housing of the 5809. In particular such housing has a cut away portion which was originally designed to avoid weld flash - in the Brevi gate weld flashing is either ground away or appears on the opposite side of the upright bar so that such cut away portion has no functional purpose on the Brevi design.

(2) the use of a hook as the lower hinge for the gate

(3) the type of uppermost hinge for the gate which requires the gate to be lifted vertically and has a slot in line with the gate as the upper hinge and an upstanding rib which can be inserted into the slot when the gate is closed as part of the lower hinge. Furthermore the lower hinge has an oval hole through it to accommodate the hinge pin.

(4) The substantial identity of the distance between and arrangement of the push button inserted in the handle and the pivot point of the handle itself.

The evidence of Mr. Jackson that all such matters could be explained by certain constraints on the design (e.g. the British Standard, savings of material and generally optimising the design parameters) is in my view implausible in the extreme particularly as Mr. Jackson was unable to say what design criteria one would start with to inevitably end up with the various features of the Baby Dan barrier which are unique to it (see Day 4 pages 470 to 471).

(ii) Similarity of the parts relied upon:

In this exercise I have considered briefly each of the parts relied upon both with regard to its earlier design (for the purposes of originality) and with regard to its similarity with the Brevi part; comparative illustrations of certain of the parts are appended to this Judgment.

(1) Cam housing

(a) Model 5807 first adopted a cam housing which was first sold on 17th January 1994. It differs significantly from the cam housing introduced into Model 5809 which was first sold on the 31st May 1995. In particular the following features were redesigned

(i) the protruding locating lug was located inboard on a leaf type spring

(ii) centre ridges were removed

(iii) the pivot hole for the handle was enclosed

(iv) the back of the hole for locating the spring and cam was filled in.

(v) the relative position of pivot hole and hole for spring and cam was changed

(vi) the holes for the spindle house prongs were filled in.

The Brevi cam housing embodies all of the above features and I have no doubt is substantially the same design as that of the 5809 cam housing.

(b) If the article in question is limited to the cam housing per se, so that the design right would exclude those features of shape or configuration which allow the part to be assembled then I consider that there would still be certain features which would still qualify for design right protection which have been substantially reproduced, namely:

(i) region X as illustrated below does not have to fit anything

(ii) the length of the leaf spring Y

(iii) the region W

Diagrams not provided

(2) Cam and push button

I do not consider either of such Brevi parts are substantially the same design as that of the Baby Dan.

(a) In the case of the cam, the 5809 cam is shorter and of smaller diameter than the 5807 but neither is substantially the same as the Brevi cam which is stepped at the enclosed end at least for the Brevi barrier actually on sale (there seems to have been an earlier version a sample of which was supplied to the Plaintiff but not sold here).

(b) In the case of the push button the Brevi button is more elongated and rounded at its enclosed end whereas the Baby Dan is flat and squat.

(3) Spring

The evidence is that the Brevi spring is a bought in item i.e. off the shelf - the fact that it is substantially the same spring in shape and configuration having the same rounds does not mean that Brevi have copied the Plaintiff's spring design. I do not consider the Plaintiff has made out a case of copying of such part. Furthermore no design right can subsist in such a spring if it was in existence prior to 1st August 1989 and certainly would not be owned by the Plaintiff.

(4) Handle

I do not consider the Brevi handle is substantially the same as either the Baby Dan handle of Model 5809 or the earlier handle of Model 5807. It is true that there are features of the top portion of the handle which appear to be similar but no reliance is placed on part of the handle per se. Overall the respective Baby Dan handle (5809) and the Brevi handle are significantly different - the Brevi handle being much more rounded in appearance.

(5) Spindle Housing

Exhibit P8 relates to three spindle housings, a grey coloured housing which is for Baby Dan's 5801 model first sold in 1991; a blue housing which is for the 5809 model and a white coloured housing which is the Brevi housing. There was an intervening spindle housing for the 5807 model which incorporated two prongs at the bottom. Subject to minor changes, namely in filling of part of the plastic surround to the cam track on the sides, I consider that the Baby Dan spindle housing for the 5809 is the same as that for the 5801 model. Thus there is no originality or separate subsistence of design right in the 5809 housing. Furthermore whilst those features on the working side of the housing nearest to and in engagement with the handle have clearly been adopted (such as the two cam tracks in which the lugs on the handle engage and the regions marked X and Z as illustrated in Bundle 4 page 103). Nevertheless I consider the overall appearance of the Brevi spindle housing with its more rounded appearance is not substantially the same design as the Baby Dan design particularly when viewed from the side visible when assembled which has a tapered effect compared to the Baby Dan which is more angular and square.

(6) Spindle head and spindle

(a) Mr. Andersen stated that the 5800 spindle head was first sold in November 1989 and that apart from four small holes introduced in February 1994 has remained the same. As to when it was first designed, his evidence was not clear other than he thought it was late 1989 (see Day 1 page 96). Given the uncertainty as to dates and lack of corroborating documentary evidence I do not consider the Plaintiff has established whether the head was designed before or after the 1st August 1989.

In any event no evidence was adduced as to the similarity of the Brevi spindle head other than reference being made to Exhibit P3 where a Brevi head has been opened up.

(b) The Brevi spindle itself is a bough in item namely a length of M10 bolt similar to that which the Plaintiff has used since 1986. As such no design rights can subsist in such an article or part.

(7) Spindle retainer

As shown in Exhibit P6, the 5809 spindle retainer differs from the spindle retainer for the earlier 5807 in the following significant ways:

(a) it has been lengthened by about 10mm

(b) the surface ribs have been removed

(c) a conical indentation gutter to locate the locking nut has been incorporated at the spindle head end

(d) the dimension of the head of the retainer has been enlarged to about 4mm

(e) indentations on the outer lip of the head of the retainer have been introduced

The Brevi spindle retainer embodies features (a) to (d) but not feature (e). Other differences over the 5809 spindle retainer are (I) ribs along each of the corners do not extend along its whole length (ii) the tang at the end (to engage the spindle) is flat and narrower and has an upright hook at the end whereas the 5809 is slightly angled.

Having considered such differences, I consider that the similarities are still such that the Brevi spindle retainer is substantially the same design as the 5809 and of different design to the 5807 (5800). The design changes to the 5807 retainer were firstly feature (a) above which was first incorporated in the 5809 model in May 1995 and secondly feature (c) (and therefore presumably features 9d) and (e)), which were first incorporated in the 5809 model in June 1996.

(8) Upper hinge and lower hinge

(a) I do not consider the Brevi upper hinge is substantially the same design as the Baby Dan hinge of the 5809 model. The only identity is in the slot, the rest of the hinge has been altered aesthetically.

(b) Likewise the Brevi lower hinge apart from the upstanding rib which engages the slot of the upper hinge and the oval hole is substantially different aesthetically

(9) Hinge support

The 5809 hinge support is square shaped bracket welded perpendicularly to the main vertical frame member and apart from an oval hole (introduced in September 1994 and first sold on 2nd December 1994) was the same as that for the 5807 model. The Brevi hinge support differs from the Baby Dan support in that the square bracket has been rounded at the corners and given the simplicity of the part, I do not consider it to be substantially the same design as the Baby Dan design.

(10) Hook

The 5809 hook on the bottom bar of the gate which engages with the bottom bar of the frame is the same as on the 5807 hook. It is in the shape of a J hook.

The Brevi hook is not the same as the 5809 hook and is more in the shape of an L than a J. Again given the simplicity of the part I do not consider the Brevi hook is substantially the same design as the Baby Dan.

(11) The two holes bar

Model 5807 had a bar to support the cam housing with one hole. When the cam housing for the 5809 model was redesigned, a second hole was made in the bar to accommodate the new location for the depending lug. This two hole bar Baby Dan version of the safety barrier was sold between January 1995 and June 1995.

The Brevi barrier also has a two hole bar to support the cam housing. However the second hole is in a different position to that of the Plaintiff's (see Bundle 3 at page 102) and is said to be there as an aid when assembling the cam housing. I consider that the bar itself is commonplace (see Day 2/180) and/or is not an original design so that the only element of design must lie in the disposition of the two holes. I do not consider the Brevi two holes bar to be substantially to the same design as the Plaintiff's given the differing disposition of the holes.

Conclusion

Apart from the cam housing and the spindle retainer I do not consider the Brevi parts are to the same design or substantially to the same design as the Baby Dan designs.

(iii) and (iv) Are the First Defendants liable for the importation and/or dealing in baby barriers embodying such infringing parts?

The First Defendant says firstly that as they supply the Brevi baby barrier to the Second Defendant ex factory price in Italy they neither import or sell the Brevi barrier in the UK. Secondly they say that in any event they did not have the requisite knowledge that such barriers were infringing articles.

Mr. Birss draws attention to the fact that at the Harrogate Baby Products Fair in March 1997 at which both Dr. Brevi and Brevi's export manager Mr. Maggiotto were present, there is a Brevi stand (albeit paid for by the second Defendants) at which Brevi products including the Brevi barrier are displayed and the Brevi catalogue is distributed (see Exhibit 2 to Mr. Andersen's first witness statement). The catalogue offers for sale the Brevi barrier (see pages 54 to 56 of the Exhibit) and on the last page the First Defendant's name and address is supplied. It was the evidence of Dr. Brevi that where there are large accounts the First Defendant supplied such accounts through a UK corporate vehicle known as B3 Limited (see Day 2/259-19 to 265-16). This company operates from the same address as two of the directors of the Second Defendant. Whilst it is true that the Brevi barrier prior to the issue of the Writ in this case had only been supplied/sold through the Second Defendant, I consider the above facts establish that prior to the issue of the Writ the First Defendant was offering for sale the Brevi barrier in the UK or at the very lowest was threatening to sell such barriers.

Mr. Birss also relied on an invoice dated 5th August 1997b (see Bundle 7 page 182) in which Brevi invoiced the second Defendant both for the price of the Brevi barrier ex factory and its transportation to the UK as establishing the First Defendant actually imported the barriers into the UK (see Day 2 page 250-13 to 252-14, Day 3 page 380-9 to 383-6). Mr. Cottrell stated that it was his company that insured the goods.

Whilst there are no documents relating to contracts of carriage I consider such facts establish that on such occasions where the First Defendant arranged and charged for transportation at the very least they are jointly liable with the Second Defendant for such importation (see below).

As regards the First Defendant's knowledge, not only did they copy the offending parts (as I have already held) but also by letter dated 24th March 1997 (5 months before the Writ was issued) sent to the Second Defendants address the First Defendant was given notice of the Plaintiff's complaint. Correspondence ensued which culminated in an inspection meeting at the Plaintiff's solicitors offices on the 10th September 1997 at which both Dr. Brevi and Mr. Cottrell were present.

I consider that the First Defendant had actual knowledge that the Brevi barrier embodying the cam housing was an infringing article or alternatively had sufficient knowledge of the facts from which a reasonable man would have concluded that the barriers were infringing articles (see L.A. Gear Inc v Hi-Tech Sports plc (1992) FSR 121).

(v) Knowledge of the Second Defendant

It is common ground that the Second Defendant prior to the Writ was offering for sale and selling the Brevi safety barrier and indeed has continued to do so ever since.

As the Second Defendant was trading as Brevi, the Plaintiff was unaware of the activities of the Second Defendant as an independent company until after proceedings against the First Defendant had commenced. In fact the Second Defendant was joined in the proceedings on the 28th November 1997 some 2 1/2 months after the inspection meeting.

Having received the letter before action dated 24th March 1997 addressed to Brevi but sent to the Second Defendant's address and therefore having been alerted to the dispute Mr. Cottrell regarded the dispute as a matter between Brevi and the Plaintiff (see Day 3/379-21 to 380-5). Mr. Cottrell's reaction to the letter was to pass it on to the First Defendant's solicitors. By the time of the inspection meeting at Bird & Bird, Mr. Cottrell (having since taken delivery of quantities of the Brevi baby barriers) was sufficiently concerned to attend that meeting (see Day 3 387-1 to 388-26) - albeit Mr. Cottrell's motives for attending appear to have been commercial ones to do a deal rather than any interest in the merits of the Plaintiff's claims (see Day 3/375-22 to 377-15).

At the date of the Writ on the 11th September 1997, given the close relationship between the First and Second Defendants (Mr. Cottrell gave evidence that he spoke to them several times a day (see Day 2-5 to 3/375)), I consider that the Second Defendant had sufficient knowledge of the facts had Mr. Cottrell cared to investigate the matter that the Brevi baby barrier was an infringing article - in particular of the grounds on which the Plaintiff was so alleging.

I consider also the Second Defendant had had sufficient time to investigate the matter but had deliberately left it to the First Defendant to sort out. Furthermore even had they not sufficient knowledge as of the date of the Writ, I would have adopted the approach of Lord Justice Staughton in L.A. Gear Inc (at page 139) that the Second Defendant was clearly threatening to infringe and therefore an injunction would otherwise have been justifiable.

(vi) Joint tortfeasors.

Given my findings above, I shall only deal briefly with this question.

Mr. Baldwin referred me to a number of cases and I need only refer to CBS v Amstrad (1988 RPC 567) at 606-607 where Lord Templeman refers to the authorities including The Koursk (1924) P.140 which was a common design case (as I believe this case to be). Lord Templeman's test which I shall apply is "joint infringers are two or more persons who act in the concert with one another pursuant to a common design in the infringement". Mr. Baldwin contended that both parties to the common design must be participants to the tort - I do not believe this adds anything to Lord Templeman's test.

In summary I consider the parties were acting in concert and therefore are jointlyliable having regard to the following matters:

(1) the importation of the Brevi barriers from Italy to the UK was carried out jointly. As explained above the First Defendant organised with Mr. Cottrell for the Second Defendant the transportation of the Brevi barriers from Italy to the UK on a number of occasions.

(2) the testing of the Brevi barrier for marketing in the UK. Mr.Cottrell gave evidence that in November 1996 with the assistance of Mr. Pagani of the First Defendant he secured the necessary test certificate in compliance with the British Standard (see Day 3/378-2 to 379-20 Bundle 7/193D).

(3) the use by the Second Defendant of the First Defendant's name "Brevi" as its trading style which was done with the agreement of the First Defendant and the day to day contact are strong indicators of the close relationship between the parties. This is also illustrated by the Brevi stand at the various trade shows (Harrogate and Olympia), the attendance of personnel from the First Defendant and the sale of Brevi products by reference to the First Defendant's catalogue.

Such matters in my view constitute a common design on the part of the parties both to import and sell in the UK the infringing baby barriers.

Conclusion

For the reasons given in this Judgment, I find for the Plaintiff that Brevi baby barrier in so far as it incorporates the cam housing and/or the spindle retainer is an infringing article and that by the importation and sale of such product in the UK the First and Second Defendants have infringed the Plaintiff's design rights therein.

I will hear counsel on the appropriate order to be made.

Note 1   see Bundle 5 Tab 1 for examples of such gates in the 1980's and early 1990's    [Back]

Note 2   Bundle 3 Tab 2    [Back]

Note 3   see The Modern Law of Copyright and Designs (2nd edition) by Laddie, Prescott and Vitoria paragraphs 43.5 to 43.7    [Back]