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

Mr Wakefield had five points. The first was that the angles of bend of the Registered Design differ from those of the Accused Design. Mr Wakefield annotated an image of the Registered Design marking the angles which he designated A to D with his measurements in degrees. I have reproduced that image as Annex 4 with argument from Mr Wakefield redacted. Mr Wakefield said that he had measured the equivalent angles A to D of the Accused Design which are respectively 90, 55, 35 and 60 degrees. He argued that this proved that the Accused Design produced a different overall impression.

Secondly, Mr Wakefield underlined that the Prototype comes in component parts. The core section, which is equivalent to what is shown in the Registered Design, is also in component parts. This means that it can be configured into different shapes. The user may or may not assemble the Prototype into the shape relied on by Mr Barber to allege infringement.

Thirdly, the Prototype has a scorpion logo on the handle. Fourthly, the Prototype is a different colour. Fifthly, the Prototype always comes with a handle.

Mr Barber did not dispute Mr Wakefield’s measurement of the angles of the Registered Design and the Prototype although he said that he had not checked them himself. His response was that the Prototype was not really one design. Up to then, discussion with regard to the Prototype had centred on image A in Annex 2. Mr Barber pointed to another illustration of the Prototype in the evidence which I have reproduced as image B in the same Annex, being another Prototype with different angles. (A little care has to be taken with image B because it may have parts attached to the core of the Prototype influencing the perception of the shape of the core).

When asked by me, Mr Wakefield agreed that there was more than one Prototype. It seems that four were made and they were not identical, although only two alternative shapes were shown in the photographs in the evidence. Mr Wakefield said that angles of the Prototype which he had presented were taken from the version shown in Image A of Annex 2.

In principle it is possible that one or more of the four Prototypes infringes and some or all of the others do not. I know what two of the four look like, but not the other two. I will go with Mr Wakefield’s measured angles and if necessary return to whether the detail of the angles matters.

Turning to Mr Wakefield’s second argument, it raises a point of law: assuming that in one assembled configuration the Prototype produces a different overall impression to that produced by the Registered Design but in another configuration it does not, does the Prototype infringe?

I have found no UK authority on this. In Stone, European Union Design Law, 2^nd ed., the author says at para. 4.46:

I have not been able to access the judgment in Bike First. I cannot be guided by directions accompanying the product as suggested by the Dutch Court since, unsurprisingly, there were none to accompany the Prototype.

I think I must approach this from basic principles. If on the facts there is a configuration of an accused product which the user is likely to adopt and in which configuration the product has a design which does not produce on the informed user a different overall impression to that produced by the Registered Design, I think it would be unsatisfactory if the marketing of the accused product can escape infringement solely because the product could in theory be configured in a different manner for use and in which configuration its design creates a different overall impression to that of the Registered Design. Adopting that view of the law would open up what may offer an easy route to using a registered design while evading infringement. This may be a question of fact and degree. As the Rechtbank ‘s-Gravenhage observed, directions may be important. I take the view that if the accused design would infringe in a configuration of the accused product likely to be used by the end user, that is sufficient to establish infringement under the Act.

In relation to this aspect of the case I can ignore the different angles discussed above in relation to Mr Wakefield’s first argument. Mr Wakefield told me that the way in which the component parts of the Prototype would likely be put together by the end user is in the configuration shown in the images of Annex 2. I find that I can assess infringement solely by reference to that configuration.

As to Mr Wakefield’s third, fourth and fifth arguments, I asked him to point out the scorpion logo on those images. He said that it was too indistinct to see. I will disregard the logo. Colour is not an issue; the Registered Design is in monochrome which, by convention, means that it claims a design irrespective of colour. Finally, the design claimed relates to the core part of a letter box tool. The fact that a handle can be added at one end is not relevant to the comparison of overall impressions of cores.

Having in mind the foregoing, I consider first the overall impressions created by the Registered Design as illustrated in Annex 1 and by the Prototype as shown in Annex 2, image (a).

Both have a substantially U-shaped section. The longer first side of the U shape ends at the termination of one end of the core. The shorter second side of the U shape is continued by the design extending at an obtuse angle away from the first side and then extends at an obtuse angle in the opposite direction before coming to an end. My conclusion is that, particularly when compared to the design corpus, the Prototype does not create a different overall impression to that created by the Registered Design.

It is not clear from Annex 2, image (b) where the core ends and the parts added to it begin. The main differences are that the U-bend is sharper, as is the angle of the shorter side extending away from the first side. However, again having regard to the design corpus, this version of the Prototype does not, in my judgment, create a different overall impression to that created by the Registered Design.