IP-2022-000020 - [2023] EWHC 1303 (IPEC)

Section 226 requires “copying the design so as to produce articles exactly or substantially to that design”: see s 226(2). This is not the same test as in copyright law: see L Woolley Jewellers v A&A Jewellery [2003] FSR 15 at [19], [21]-[22]; Neptune at [52]-[53].

Design right is then infringed by anyone who, without the licence of the design right owner “does, or authorises another to do” anything which would amount to infringement: see s 226(3). It was not disputed that the test for “authorising” was the same as in copyright law: see CBS Songs v Amstrad Consumer Electronics [1988] RPC 567, ie the grant or purported grant to do the act complained of.

There was a dispute about what sort of acts actually amounted to such authorisation. The parties agreed that simply ordering a pre-existing product did not amount to authorisation to make that product, because that product had already been made. Nor was it disputed that where a party had contributed something to the design of an article it might be liable as authorising the manufacture thereof: see eg Pensher Security Door Co Ltd v Sunderland City Council [2000] RPC 249, CA. The dispute was whether ordering products which did not yet exist, but which were shown in a pre-existing catalogue, amounted to authorising the manufacture of the particular products which were ordered. However because of the next point it is not necessary to resolve this.

It was not disputed that primary infringement requires an act to be done in the UK (or alternatively, authorisation to do an act in the UK), where the “UK” includes for this purpose territorial waters and fixed Continental Shelf installations. This is implicit from the nature of the 1988 Act, which is a UK statute, but is in any event made clear from s 228 which defines an infringing article and contains the following provisions: