IP-2020-000029 - [2024] EWHC 3058 (IPEC)

I have reviewed the six issues which seemed to arise from the pleadings and arguments made before the trial. Had there been legal representation there would have been no need to go further.

In the present case I do not think that would be fair to the parties. At best, they are liable to be left wondering whether a finding of non-infringement means that the defendants are free to take the Prototype forward towards the sale of products made commercially. At worst, the defendants may assume that they have been given a green light to do just that, which is likely to lead to a future waste of the court’s and the parties’ time.

The effect of my findings is that if the defendants were to market commercially letter box tools of the shape the same as or sufficiently similar to that of the Prototype, they would infringe the Registered Design. I asked Mr Wakefield what his and the company’s plans were regarding the Prototype. He said that time has gone by and his attention has move on to other projects, but if the court were to find that he was free to market letter box tools like the Prototype, he would consider taking it forward.

This is not a case in which it has been either possible or sensible for the proceedings to be conducted with close attention to the wording of the pleadings. It seems fair for me to assume, as is likely, that Mr Barber intended to seek an injunction if there was a threat of future infringement. Given what Mr Wakefield told me, there is a threat – by which I do not imply any sort of criticism of Mr Wakefield or his brother. I therefore think that an injunction should be granted. The defendants would be wise to ensure that any letter box tool they market in the future looks conspicuously different from the Registered Design. This only applies until the Registered Design expires.

No other relief is appropriate. Nothing has been done which would warrant an inquiry as to damages or an account of profits. As to costs, neither side was legally represented, honours in the case are about even, so I will make no order as to costs.