The Law
38.There was little dispute between the parties as to the law. 39.As to the unregistered design right claim, sections 213 and 226 of the Copyright Designs and Patents Act 1988 (CDPA) provide:“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 the shape or configuration (whether internal or external) of the whole or part of an article.…(4) A design is not ‘original’ for the purposes of this Part if it is commonplace in a qualifying country in the design field in question at the time of its creation; and ‘qualifying country’ has the meaning given in section 217(3) .…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, 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.(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, and it is immaterial whether any intervening acts themselves infringe the design right.” 40.In Original Beauty Technology Co Ltd v G4K Fashion Ltd [2021] F.S.R. 20, Mr David Stone helpfully summarised the law on subsistence of UKUDR and commonplace designs: “87. Subsistence of UKUDR therefore requires:(i) that the design be “original”;(ii) that the designer or his/her employer is a “qualifying person”, or that articles made to the design were first marketed in a way which qualifies them for protection;(iii) that the design not be excluded from protection (“must fit, “must match” etc);(iv) that the design has been recorded in a design document or an article has been made to the design; and(v) that the term of the design has not expired.…91. In addition to being original, to qualify for UKUDR, a design must also not be “commonplace in a qualifying country in the design field in question at the time of its creation”. In Neptune [2018] F.S.R. 3 , Henry Carr J said (at [59] and [60]): “59. In Ocular Sciences Ltd v Aspect Vision Care Ltd (No.2) [1997] R.P.C. 289 Laddie J explained that the commonplace exclusion applies to ‘any design which is trite, trivial, common-or-garden, hackneyed or of the type which would excite no peculiar attention in those in the relevant art’. The analysis must be conducted by reference to material ‘shown to be current in the thinking of designers in the field at the time of creation of the designs’, per Jacob LJ in Lambretta Clothing Co Ltd v Teddy Smith (UK) Ltd [2004] EWCA Civ 886; [2005] R.P.C. 6 at [56].60. Following the amendment to s.213(2) , it is more difficult for the claimant to define the shape of a design at a higher level of abstraction than its physical manifestation in the relevant article. As explained by Arnold J in the Whitby case at [45], this makes it harder for the claimant to prove infringement, and also makes it harder for the defendant to prove that the design is commonplace. Nonetheless, the commonplace exclusion remains a useful crosscheck on the breadth of a claim to infringement—the more generalised the definition of the design relied upon, the more likely it is to encompass designs which would ‘excite no peculiar attention in those in the relevant art’.”92. I was also referred to the useful summary of the task facing a defendant set out by HHJ Hacon in Action Storage Systems Ltd v G-Force Europe.Com Ltd [2016] EWHC 3151 (IPEC); [2017] F.S.R. 18 at [37]:“(1) A defendant alleging that a design is commonplace should plead the significant features of the design as he contends them to be, the prior art relied on in which those features are said to be found and the date from which each cited item of prior art was available to designers in the relevant design field.(2) Prior art which renders a design commonplace will not be obscure. The evidential burden rests on the defendant to show that it is not.(3) A design will be commonplace if it is shown to have been current in the thinking of designers in the field in question at the time of creation of the design, see Lambretta [2005] R.P.C. 6 at [56]. Another way of looking at this is that a commonplace design will be one which is trite, trivial, common-or-garden, hackneyed or of the type which would excite no particular attention in those in the relevant design field, see Ocular Sciences Ltd v Aspect Vision Care Ltd (No.2) [1997] R.P.C. 289, at p.429, approved in Farmers Build Ltd (In Liquidation) v Carier Bulk Materials Handling Ltd [2000] E.C.D.R. 42; [1999] R.P.C. 461, at pp.477 and 479. A third way of characterising a commonplace design is that it will be ready to hand, not matter that has to be hunted for and found at the last minute, see Ultraframe (UK) Ltd v Eurocell Building Plastics Ltd [2005] EWCA Civ 761; [2005] R.P.C. 36, at [60].(4) The design field in question is that with which a notional designer of the article in issue is familiar, see Lambretta [2005] R.P.C. 6 at [45].(5) A design made up of features which individually are commonplace is not necessarily itself commonplace. A new combination of run-of-the-mill features may not be commonplace. See Ocular Sciences [1997] R.P.C. 289 at p.429, approved by the Court of Appeal in Farmers Build [1999] R.P.C. 461 at p.476 and in Ultraframe [2005] EWCA Civ 761 at [64].41.In Farmers Build Mummery LJ had also said at p. 481:“The shorter life of the design right, the narrower scope of protection against copying and the prima facie protection given by it to designs of functional articles are indications that the reference to “commonplace” designs in section 213(4) should be interpreted narrowly rather than broadly. The fact is that very many designs of functional articles which fall within the definition of a “design” are likely to be “commonplace” if that term is construed broadly in the sense of “well known”.”42.Applying that point in A. Fulton Co Ltd v Grant Barnett & Co [2001] RPC 16, Park J said:“51. … 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. …52. 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.”43.Section 226(2) is clear: infringement requires copying and the allegedly infringing design must be made “exactly or substantially” to the design. In Neptune (Europe) Ltd v Devol Kitchens Ltd [2017] EWHC 2172 [2018] F.S.R. 3, Henry Carr J said at [49] that this is an objective test to be decided through the eyes of the person to whom the design is directed. He went on:“53. In contrast to copyright, it is not an infringement of a UK unregistered design to reproduce ‘a substantial part’ of a design. The importance of this distinction may be illustrated by the facts of the present case. Apart from the features which Neptune has excluded, it relies upon the entirety of each of the articles of furniture which is said to embody the designs in issue, and does not rely upon parts or combinations of partscombination, have not been pleaded as a design right.”44.So far as the registered design claim is concerned, it was common ground that the main issues related to validity, as to which the Defendants raised allegations of lack of novelty and lack of individual character, and infringement.45.For a registered design to be protected, Article 4(1) of the Regulation and s 1B of the 1949 Act require it both to be new and to have individual character. Section 1B provides:“(1) A design shall be protected by a right in a registered design to the extent that the design is new and has individual character.(2) For the purposes of subsection (1) above, a design is new if no identical design or no design whose features differ only in immaterial details has been made available to the public before the relevant date.(3) For the purposes of subsection (1) above, a design has 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 before the relevant date.”46.As to infringement, section 7 of the 1949 Act provides:“Right given by registration.(1) The registration of a design under this Act gives the registered proprietor the exclusive right to use the design and any design which does not produce on the informed user a different overall impression.…(3) In determining for the purposes of subsection (1) above whether a design produces a different overall impression on the informed user, the degree of freedom of the author in creating his design shall be taken into consideration.”47.In Cantel Medical (UK) Limited v ARC Medical Design Limited [2018] EWHC 345 (Pat) at [169] to [182] HHJ Hacon (sitting as a Judge of the Patents Court) summarised the law and provided a helpful six stage summary of how to compare an RCD with an allegedly infringing design. He said:"169. A registered Community design ("RCD") which is markedly different from any member of the design corpus will confer protection of a scope greater than would be conferred by a RCD only incrementally different from a member of the design corpus, see Procter & Gamble Co v Reckitt Benckiser (UK) Ltd [2007] EWCA Civ 936; [2008] FSR 8, at [35(ii)].170. Designs which are strikingly new in every way will be unusual. More often some features will be commonly found in the design corpus, others not. In such a case the correct approach is to give little or no weight to common features.”HHJ Hacon went on to refer to the decision of the General Court in H&M Hennes & Mauritz BV & Co. KG v OHIM (Case T-525/13) EU:T:2015:617; [2015] E.C.D.R. 20, mandating a four stage examination of the individual character of a Community design. He said:‘173. As explained, similarities between the designs of corresponding parts of two products which are attributable to design constraints will be given little significance in the comparison of the overall impressions they produce. Though where the entirety of each design is subject to design constraints, minor differences between them can be sufficient to produce different overall impressions.174. However, where there are at least some elements in respect of which the designer had a high level of design freedom, attention is likely to be focussed on those parts with their greater potential for variability. Similarities cannot be explained away by design restraints and will tend towards the view that the overall impressions do not differ, whereas differences will lead towards the opposite conclusion.…179. Some design elements are … more equal than others. An informed user may discriminate between elements of an RCD when comparing each with the corresponding element of an accused design. Greater or lesser significance may be attached to similarities or differences, as the case may be, depending on the practical significance of the relevant part of the product or on other reasons affecting the degree to which their appearance would matter to the informed user...181. I here adapt the four-stages prescribed by the General Court in H&M Hennes for assessing the individual character of a Community Design to the comparison of an RCD with an accused design, adding other matters relevant to the present case. The court must:(1) Decide the sector to which the products in which the designs are intended to be incorporated or to which they are intended to be applied belong;(2) Identify the informed user and having done so decide (a) the degree of the informed user's awareness of the prior art and (b) the level of attention paid by the informed user in the comparison, direct if possible, of the designs;(3) Decide the designer's degree of freedom in developing his design;(4) Assess the outcome of the comparison between the RCD and the contested designs, taking into account (a) the sector in question, (b) the designer's degree of freedom, and (c) the overall impressions produced by the designs on the informed user, who will have in mind any earlier design which has been made available to the public.182. To this I would add:(5) Features of the designs which are solely dictated by technical function are to be ignored in the comparison.(6) The informed user may in some cases discriminate between elements of the respective designs, attaching different degrees of importance to similarities or differences. This can depend on the practical significance of the relevant part of the product, the extent to which it would be seen in use, or on other matters."48.HHJ Birss QC (sitting as a Judge of the Patents Court as he then was) described the informed user in Samsung Electronics (UK) Ltd v Apple Inc [2012] EWHC 1882 (Pat); [2013] E.C.D.R. 1, which was approved by the Court of Appeal at [2012] EWCA Civ 1339; [2013] F.S.R. 9 at [10]:“(i) He (or she) is a user of the product in which the design is intended to be incorporated, not a designer, technical expert, manufacturer or seller ( PepsiCo paragraph 54 referring to Grupo Promer EU:T:2010:96 paragraph 62; Shenzhen EU:T:2010:248 paragraph 46);(ii) However, unlike the average consumer of trade mark law, he is particularly observant (PepsiCo paragraph 53);(iii) He has knowledge of the design corpus and of the design features normally included in the designs existing in the sector concerned (PepsiCo paragraph 59 and also paragraph 54 referring to Grupo Promer EU:T:2010:96 paragraph 62);(iv) He is interested in the products concerned and shows a relatively high degree of attention when he uses them (PepsiCo paragraph 59);(v) He conducts a direct comparison of the designs in issue unless there are specific circumstances or the devices have certain characteristics which make it impractical or uncommon to do so (PepsiCo paragraph 55).I would add that the informed user neither (a) merely perceives the designs as a whole and does not analyse details, nor (b) observes in detail minimal differences which may exist (PepsiCo paragraph 59).”