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

Mr Barber’s belief that the Prototype was sold, not as a prototype but as a final marketed product, came from the fact that it was clearly publicised in a trade fair and elsewhere. He particularly relied on a photograph in the evidence of the Prototype, in disassembled form, in a tool box with a lid on which is the label ‘UltiMATE Tools from ALDRIDGE’. Aldridge is the name of a retailer of machine tools.

Mr Wakefield explained that one of the four prototypes was given to a Master Locksmith called Julian Alder so that he could test it and provide feedback. Mr Alder had a box of tools made by Ultimate Tools obtained from Aldridge. He used it as a convenient place to store the Prototype. The photograph relied on by Mr Barber was of Mr Alder’s box with the disassembled Prototype in it. Mr Barber very fairly offered no reason to doubt the accuracy of Mr Wakefield’s account of this and I accept it.

The Prototype was undoubtedly publicised in media posts and at least one trade fair. No examples of the Prototype have been sold. Only one left the defendants’ possession, the one that was provided to Mr Alder for testing.

Sections 7 and 7A of the 1949 Act provide, so far as is relevant:

The Prototypes were made by Steven and Simon Wakefield for the business of Ultimate Tools. The acts of making and using were acts of infringement, subject to s.7A. There were no offers for sale. Possibly, the offer to supply a Prototype to Mr Alder was a further act of infringement, though I need not resolve that.

I have found no direct authority on the effect of s.7A(2)(a) and (b). The second limb of s.7A(2)(a) is satisfied: my understanding of Mr Wakefield’s evidence is that neither the making and using of the Prototypes nor their supply to Mr Alder were done for commercial purposes.

With regard to the first limb of s.7A(2)(a), I take ‘privately’ to be the opposite of ‘publicly’. In the case of ‘putting on the market’ it is hard to see how that could ever be done privately. ‘Offering’, on the other hand, could either be done privately or publicly, in the former case where an awareness of the supply is restricted to the supplier and recipient or recipients, or possibly also to some other limited category of people. Similarly an act of use could be either public or private.

Subsection 7A.(2)(a) is directed to acts which would otherwise infringe. The Prototypes were undoubtedly made public in media posts and at a trade fair. But those acts of making public were not acts of infringement under s.7(2)(a). The subsection contains the word ‘includes’ but I doubt that it was Parliament’s intention (or the intention of the European legislature, see art. 19(1) of Council Regulation 6/2002) that a person who has done nothing but receive a product and shown it to others in public should be held to have committed an act of infringement.

The acts in issue are making and using the Prototypes and (arguably) offering one of them to Mr Alder. It would make little sense to say that the Prototypes were made publicly. As to offering, I have no reason to think that anyone other than Steven and Simon Wakefield and Mr Alder was aware of the act of supply. Likewise the use made of the Prototypes by the defendants does not seem to have been made public. Accordingly I find that, pursuant to s.7A(2)(a), the making and use of the Prototypes and their supply to Mr Alder were not acts of infringement.

I am more doubtful about whether those acts fall within s.7A(2)(b). They were made and used by Steven and Simon Wakefield for the purpose of testing with regard to function but also with regard to likely market response. It may be stretching the term ‘experimental purposes’ to include the exploration of marketing potential, as opposed to the more obvious meaning of experiments to explore an article’s performance in use. I need not decide the point.

I find that pursuant to s.7(1) and (2) and s.7A(2)(a) there has been no infringement of the Registered Design.

The joint liability of Steven and Simon Wakefield does not arise.