Intellectual Property Enterprise Court

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

Fecha: 02-Jun-2023

Subsistence

Legal context

10.

A design will only qualify for UKUDR protection under s 213 of the Act if it is “original” in two distinct senses.

The first is set out in s 213(1). This refers to “original” in the copyright sense, meaning originating with the author rather than being copied by the author from another: see Arnold J (as he then was) in Whitby Specialist Vehicles Ltd v Yorkshire Specialist Vehicles and Others [2016] FSR 5 at [43].

The second sense is set out in s 213(4). This provides that a design is not original if it is “commonplace” in the design field in question at the time of its creation. This was also considered by HHJ Hacon in Action Storage at [37].

11.

The main point taken by the Defendants in this case concerned originality in the copyright sense. It is well established that the bar is a low one, and “anything in the creation of the design requiring more than slavish copying will result in that design being original”: see HHJ Hacon in Action Storage Systems v G-Force Europe.com Ltd [2017] FSR 18 at [19].

12.

However whilst a small change to an existing design for part of an article may well create an existing design right for that part, it does not automatically create a fresh design right in the design of the whole article. This point arose in each of Raft Ltd v Freestyle of New Haven [2016] EWHC 1711 (IPEC), HHJ Hacon; Neptune (Europe) v DeVol Kitchens [2018] FSR 3, Henry Carr J; and Shnuggle Ltd v Munchkin Inc [2020] FSR 22, HHJ Melissa Clarke. Of these, Neptune (which cites Raft) is probably the clearest example of the principle in operation.

13.

Neptune concerned various glazed cabinets, one of which (“Design 12”) featured a straight top to the glazing. It looked like this:

However, it was accepted during the trial that Design 12 was a modification to an earlier design which had arched, as opposed to straight, tops to the glazing but which was otherwise the same design.