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

The legislation governing the subsistence of design right is contained in s.213 of the Copyright, Designs and Patents Act 1988 (“CPDA”), the relevant parts of which read as follows:

213 Design right.

(1)

Design right is a property right which subsists in accordance with this Part in an original design.

(2)

In this Part “design” means the design of  the shape or configuration (whether internal or external) of the whole or part of an article.

(3)

Design right does not subsist in—

(a)

a method or principle of construction,

(b)

features of shape or configuration of an article which—

(i)

enable the article to be connected to, or placed in, around or against, another article so that either article may perform its function, or

(ii)

are dependent upon the appearance of another article of which the article is intended by the designer to form an integral part, or

(c)

surface decoration.

(4)

A design is not “original” for the purposes of this Part if it is commonplace in a qualifying country in the design field in question at the time of its creation; and “qualifying country” has the meaning given in section 217(3).

There are a couple of overarching points which I should make before turning to the detail of the individual designs. The Defendants criticise the way in which the designs are claimed by the Claimant. They point out that it is conventional for designs to be defined in proceedings such as this by reference to design documents with dimensions specified. Part of the exercise in assessing copying and infringement can then be carried out by comparing the dimensions of the claimed design with the alleged infringement.

It is correct that this is the usual way in which design right claims are assessed. However, it is not a requirement for a design to have been recorded in a design document for design right to subsist. Design right can also come into being when an article is first made to the design (see s.216 CPDA). In the present case it was not the Claimant’s practice to record her designs in design documents; instead the designs were made as articles. It is therefore legitimate for her to seek to define the designs by reference to contemporaneous pictures of the articles made.

However, as a result of this, the designs are much more generally defined than they might have been had they instead been referenced in design documents. This has a number of consequences. First, it enables the Defendants to say that the claimed features are really descriptions of generalised concepts, rather than actual shape and configuration in the design. In Albert Packaging v Nampack [2011] F.S.R. 32, Birss J quoted and then considered an earlier decision of Mann J in Rolawn v Turfmech [2008] R.P.C. 27. He explained:

“19.

In Rolawn Ltd v Turfmech Machinery Ltd [2008] EWHC 989 (Pat); [2008] R.P.C. 27 , the claimant sought to protect not only the actual designs of its mower as it appeared in real life, but also aspects of that overall shape by reference to a more generalised level of abstraction. In rejecting this argument, Mann J. explained the following at [79] et seq:

“79.

It is important to isolate the design in respect of which protection can be properly claimed, and it is vital to ensure that it falls within the definition of design. The Act defines design as [‘any aspect of] (Footnote: ¹) the shape or configuration … of the whole or any part of an article’, and the right cannot exist until there is an embodiment of the design in an article or in a design document. This combination of features means that design right is confined to what one can actually see in an article—either the physical article or a drawing. This is what one would naturally expect from the concept of ‘design’ (which is what is protected) which is a physical manifestation of an idea, not some underlying abstraction, and it is reinforced by the definition of the ‘designer’ in s.214 as, ‘the person who creates [the design]’. You cannot create a design until you have actually reduced it to a particular form. It is not a design while it is a conception in the designer’s head, and it becomes a design when it takes physical shape on paper or in the flesh.

80.

This means that Mr Alexander’s more abstraction-based proposals for design right are not correct. His client is not entitled to claim design right in the abstraction of ideas involving folding over, folding again, and leaning on a stand and so on. Nor is it entitled to claim design right in the concept of a tank between two vertical support stands at the back of a wide-area mower. What it is entitled to claim design right in (subject, of course, to matters such as commonplace) is aspects or configuration of the physical manifestation, not some underlying design concept. …

81.

…what is protected from copying in design right cases is the design, meaning the physical manifestation. It is not some underlying abstraction. The test for infringement is set out in s.226 … if there is to be protection for the underlying ideas it must come through that, not because the underlying ideas are themselves the design. That, among other things, is probably one of the rationales behind the ‘method or principle of construction’ exception.

…

84.

… Rolawn are not, on any footing, entitled to claim design right in the concept of a mower which has arms folding back on themselves at the mid-way point. What they may be entitled to claim design right in is in their particular mower, or an aspect of the shape or configuration of it, one of which shapes can be verbally described in the manner just set out, but in which it is the actual manifestation of it which is the design.”

20.

As Mann J. explained, this is one of the policies behind the specific exclusion that says design right cannot subsist in a “method or principle of construction”. This exclusion, and the “interface exclusion”, in s.213 play an important part in the scheme of the 1988 Act by ensuring that design right provides a suitable amount of protection without unfairly restricting fair competition.”

A further related aspect which arises in relation to the design of clothes is whether they can be defined when being worn, or should only be described when off the body. This was discussed in Freddy SpA v Hugz Clothing Ltd [2020] EWHC 3032 (IPEC) by Deputy Judge David Stone. He rejected the claimant’s attempt in that case to rely on the design of the goods as worn, holding as follows at §§96-99:

When Worn Design

96.

There was what I might describe as a definitional objection which relates only to the When Worn Design. Put simply, the objection was that the shape of a pair of jeans "when worn" is not a protectable design, because it is a shape which is infinitely variable depending on the particular person wearing the jeans. Put another way, the Amended Defence claimed "the design is not the shape or configuration of an article as such, but the shape and configuration adopted by an article as produced where worn by a particular individual".

97.

In response, Ms Rogan set out in her witness statement what the Claimant's counsel described as "a comprehensive explanation why the shape created by the WR.UP jeans is predictable". I accept Ms Rogan's explanation, as far as it goes. However, the difficulty I have is that the Amended Particulars of Claim aver that the shape the jeans take when worn "will necessarily be influenced by the body shape of the wearer". It is not enough to say that all wearers will have their buttocks both lifted and separated by the WR.UP jeans. I must assess the design as claimed. The Claimant itself avers that the shape of the jeans "when worn" will in part be determined by the shape of the wearer, and, even within a range of body shapes that would fit a given size of jeans, there will be a significant variation in body shapes. There was no evidence to say that the variously shaped wearers would all end up shaped the same when wearing the jeans. I accept Ms Rogan's evidence that the wearers' buttocks would be lifted and separated, but if those buttocks are of differing shapes, the resultant shapes of the jeans "when worn" will differ. 

98.

In his oral submissions, counsel for the Claimant put this slightly differently. He described the shape of the jeans when worn as "a lens through which one can, and in this case should, analyse the shape of the article itself". Counsel for the Claimant drew an analogy with a balloon, the rubber of which was of differing characteristics with different elasticities. When inflated, the balloon would not adopt a uniform shape. He said "when it is in its packet, it looks like a normal balloon, but when it is inflated, it adopts a fantastic shape of an animal. And the design that is … assert[ed] is the shape of the product when it is inflated." I do not accept that his analogy is useful here. Air blown or pumped into a balloon will take the shape of the balloon, because the air within the balloon is at a consistent pressure throughout. A human body part inserted into a balloon will not take the shape of the balloon – rather, the balloon will take the shape of the body part.

99.

I therefore accept the Defendants' pleaded case that the When Worn Design is invalid on the basis that, as pleaded, it does not constitute a protectable design. 

I accept and agree with this principle. A design right cannot vary depending on the individual who is wearing it. I therefore consider that I should discount from the designs in the present case any aspects which are materially influenced by the shape of the individual wearing them.

Reflecting Albert Packaging and Rowlawn, Deputy Judge Stone also observed at §107 that the “method or principle of construction” objection is liable to be applied to descriptions of design which are abstract and “are expressed too broadly beyond a claim to shape and/or configuration”.

I need to bear all these factors in mind as I assess each of the designs. The knock-on effect of a more generalised description (i.e. without dimensions) is that it ought to be easier to allege that the design is a method or principle of construction or is “commonplace”, because the generalised concept is more likely to have been seen before. To the extent the design is still valid, the broader definition may also make it easier to establish that the alleged infringements are articles made “exactly or substantially to that design” (s.226 CPDA 1988). However, demonstrating copying may be more difficult because there are likely to be other sources from which the alleged infringing design has been derived. Further, tell-tale indications of copying (e.g. repetition of precise dimensions) are less likely to be present.

At the same time it is necessary to remember the fundamental principle of the law of copyright and designs that protection is given not to ideas, but only to the expression of those ideas. The more generalised the description of the work, the further it gets from expression towards idea. This boundary must be carefully guarded.

In the present case the Defendants did not advance any case at trial that the designs are commonplace. Mr Norris explained to me that this was because of the high hurdle required to show that. That may be, but it means that one of the checks against asserting a more general design is not present. I will have to deal with the case accordingly.

The other general point to make is that up until 2014, unregistered design right could subsist in “any aspect of” the shape and configuration of the whole or part of an article. But the CPDA was amended in 2014 by s.1 of the Intellectual Property Act 2014 to delete the words “any aspect of” from the definition of a design. This narrowed the definition of a design.

The effect of this amendment has been to limit protection to designs of the whole or part of the article and prevents claimants from cherry picking certain features from a design and “claiming disembodied features, arbitrarily selected”. See Henry Carr J. in Neptune (Europe) Ltd v Devol Kitchens Ltd [2017] F.S.R. 3 at §33. Here the claimant had relied on selected features from the design of a kitchen cabinet and not relied on other features of the same cabinet. Henry Carr J. continued:

“44.

This raises the subtle question of the difference between “parts” and “aspects” of a design. In my view, aspects of a design include disembodied features which are merely recognisable or discernible, whereas parts of a design are concrete parts, which can be identified as such. Returning to the example of Laddie J in Ocular Sciences, aspects of the design of a teapot could include the combination of the end portion of the spout and the top portion of the lid, which are disembodied from each other and from the spout and lid. They are not parts of the design.”

Henry Carr J. also held that the amended definition applies to designs whether they were created before or after the amendment, if the alleged infringement occurred after the date of the amendment (Neptune, §42). That is the position in the present case and I have no reason to depart from this reasoning.

Finally, as to what is necessary for a design to be “original”, I was referred to Infopaq International A/S v Danske Dagblades Forening (C-5/08) EU:C:2009:465 [2012] Bus. L.R. 102. According to this the design must be the expression of the author’s own intellectual creation. This standard was recently confirmed by Arnold LJ in THJ Systems v Sheridan [2023] EWCA Civ 1354. He explained that the standard is met where the author was able to express their creative abilities in the production of the work by making free and creative choices so as to stamp the work created with their personal touch. In contrast, the criterion is not satisfied where the content of the work is dictated by technical considerations, rules or other constraints which leave no room for creative freedom. See §16 and the case law referred to therein.

As a matter of principle I consider that a designer of garments is generally likely to need to use their intellectual creation to create a design. Subject to the individual circumstances there is therefore no reason why design right should not subsist in clothing designs – as in Freddy v Hugz.