Claim No: IP-2022-000099 - [2025] EWHC 805 (IPEC)

Finally, I turn to the questions of primary and secondary infringement, assuming the designs are valid, have been copied and are sufficiently similar. For primary infringement, s.226 of the CPDA provides that:

“(1)

The owner of design right in a design has the exclusive right to reproduce the design for commercial purposes—

(a)

by making articles to that design, or

(b)

by making a design document recording the design for the purpose of enabling such articles to be made.

(2)

Reproduction of a design by making articles to the design means copying the design so as to produce articles exactly or substantially to that design, and references in this Part to making articles to a design shall be construed accordingly.

(3)

Design right is infringed by a person who without the licence of the design right owner does, or authorises another to do, anything which by virtue of this section is the exclusive right of the design right owner.”

In relation to secondary infringement, s.227 of the CPDA provides that:

“(1)

Design right is infringed by a person who, without the licence of the design right owner—

(a)

imports into the United Kingdom for commercial purposes, or

(b)

has in his possession for commercial purposes, or

(c)

sells, lets for hire, or offers or exposes for sale or hire, in the course of a business,

an article which is, and which he knows or has reason to believe is, an infringing article. …”

In order to establish secondary infringement, the Claimant must show that the Defendants have ‘dealt’ in Articles (i.e. that they have carried out one or more of the acts listed in s.227(1) of the CPDA), that the Articles are articles produced exactly or substantially to the Designs; and that the Defendants knew or had reason to believe that the Articles were infringing articles.

An “infringing article” is defined in s.228 of the CPDA as infringing “if its making to that design was an infringement of design right in the design.”

Guidance can be found as to the meaning of “knew or had reason to believe” from equivalent authorities on secondary infringement of copyright (see Whitby Specialist Vehicles v Yorkshire Specialist Vehicles [2016] FSR 5 at §48, per Arnold J). Of these, LA Gear Inc v Hi-Tec Sports Plc [1992] F.S.R. 121, makes clear at 129, per Morritt J., approved on appeal, that there is a requirement of ‘reasonableness’ which forms the backbone of the test for constructive knowledge:

“Nevertheless, it seems to me that “reason to believe” must involve the concept of knowledge of facts from which a reasonable man would arrive at the relevant belief. Facts from which a reasonable man might suspect the relevant conclusion cannot be enough. Moreover, as it seems to me, the phrase does connote the allowance of a period of time to enable the reasonable man to evaluate those facts so as to convert the facts into a reasonable belief.”

The Defendants’ position on primary infringement is that none of the alleged infringements were made in the UK, as s.226(1)(a) requires. See Recorder Douglas Campbell KC in KF Global Brands v Lead Wear [2023] EWHC 1303 (IPEC) at §34. Further, the Defendants cannot be liable for authorisation of manufacture where the manufacture does not take place in the UK.

However, there is an absence of evidence about the geographical site of manufacture of articles alleged to infringe Designs 2-5. All that could be said was that on average 50% of the Defendant’s products come from overseas.

Further, s.226(1)(b) prohibits the making of a design document recording the design for the purpose of enabling such articles to be made. I have referred to the evidence that the Defendants were involved in the making of design documents in the UK for the articles alleged to infringe Design 1 and Designs 5(i) and (v). There is a complete absence of documentary evidence in relation to the alleged infringements of Designs 3 and 4 – it is only in relation to Design 2 that there is a positive averment that the alleged infringement was made by a third party.

In the circumstances I am therefore prepared to find that on the balance of probabilities the Defendants would have made design documents for all of the alleged infringements of Designs 1, 3, 4 and 5. There would have been primary infringement of these Designs had the other elements of the tort been made out.

In relation to secondary infringement, the Defendants argue that there was no reasonable basis to understand that the articles might be infringing until the Claimants Amended Particulars of Claim were perfected. Prior to that there was instead a mass of ill-defined allegations made in the numerous emails sent by the Claimant to the Defendants and/or in the original pleadings in this action.

I agree. I consider the relevant knowledge and belief only arose in the present case 14 days after service of the Amended Particulars of Claim, namely on 4^th May 2023.

Had I found there to be any copying of any valid design rights resulting in articles made exactly or substantially to the Claimant’s designs, it would have been necessary to have analysed the dates when the design rights came into existence and the dates of the alleged acts to work out whether there was actually any infringement taking place within the relevant lifetime of the design rights. I have set out above my findings as to the dates that any design rights in the Claimants Designs first came into subsistence. I record here the dates of the first alleged infringing activities of each of the Defendants as pleaded in the Defence:

Annex 3 contains a record of when the alleged acts ceased. I will not weary the reader further than necessary at this stage by setting out the relevant calculations based on the assumption that I am wrong about the primary findings I have made. If necessary the calculations can be made based on these dates.