Intellectual Property Enterprise Court

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

Fecha: 28-Nov-2024

Judge Hacon

Judge Hacon :

Introduction

This is a claim for infringement of UK Registered Design No. 4028780 (‘the Registered Design’).

The claimant, Mr Barber, and the defendants all trade in the field of machine tools. The first defendant, Steven Wakefield and his brother Simon, the third defendant, contribute to the running of the second defendant company, Ultimate Tools.

The claim form was issued in March 2019 in IPEC small claims track. By an order of DJ Hart dated 15 January 2020 the case was transferred to this court pursuant to CPR 63.27(1)(a) which excludes claims relating to a registered design from the jurisdiction of IPEC small claims. The case came before me in this Court in July of this year. Both sides are litigants in person and I could see why the case had been launched by Mr Barber in the small claims track.

The claim and defence as pleaded, though unclear on both sides, was of a wider scope than just infringement of a registered design.

The pleadings were not at all in a fit state, satisfying neither CPR Part 16 nor rule 63.20(1). Rather than insisting that the parties spend money on legal advice to ensure compliance with the rules and more clearly explained lines of dispute, I suggested to them that the claim should be limited to the single and central matter of alleged infringement of the Registered Design, that the parties should file evidence and make submissions on that matter alone and that I would then deliver a judgment.

The parties agreed to this way forward. The arrangement was formalised along with other directions for the trial in my Order dated 11 July 2024.

That Order stated that the trial would be confined to the following six issues:

(1)

Whether the Registered Design was new as of 19 February 2013, the date of registration.

(2)

Whether the Registered Design has individual character.

(3)

Whether any features of the Registered Design are features of appearance of a product solely dictated by the product’s technical function.

(4)

Having in mind the answer to issue (3) above, whether the design of the Second Defendant’s tool complained of in the Particulars of Claim, defined as “the Accused Design”, produces on the informed user a different overall impression to that produced by the Registered Design.

(5)

Whether the Second Defendant has used the Accused Design, which shall be taken to mean whether the Second Defendant has either (a) made, offered, put on the market, imported, exported or used a product to which the Accused Design is incorporated or (b) stocked such a product for those purposes.

(6)

If the Second Defendant is found liable for infringement of the Registered Design, whether the First and/or Third Defendants are jointly liable with the Second Defendant for the use of the Accused Design.

The parties have since submitted evidence and argument addressing those issues.

Issues (1) and (2) fell away at the trial. The parties were agreed that the Registered Design was new and had individual character as of 19 February 2013. The defendants had a point about technical function but it really went to their argument on infringement.