Leeds Ice Cream Van Makers lose Design and Trade Mark Infringement Claim

In Whitby Specialist Vehicles Ltd v Yorkshire Specialist Vehicles Ltd and Others [2014] EWHC 4242 (Pat) (17 Dec 2014) a company in Leeds which converts commercial vehicles into ice cream vans and the individuals behind it were sued in the Patents Court by Whitby Specialist Vehicles Ltd for registered design, design right and trade mark infringement. I have discussed the case in detail in Designs in Ice Cream Vans: Whitby Specialist Vehicles Ltd v Yorkshire Specialist Vehicles Ltd and Others 27 Dec 2014 NIPC Law.

The case was unusual in that it proceeded in the Patents Court which is a specialist court within the High Court for the trial of patent, registered design, semiconductor topography and plant breeders' right claims worth over £500,000. The case against the defendants was that they had bought one of the claimant's vans and used it as a template for making parts that they used to convert other vans. While any copying is serious it is unlikely that the damages or accountable profits will come close to the £500,000 figure. The usual forum for disputes of this kind is the Intellectual Property Enterprise Court ("IPEC") which I mentioned in Holding your Own - How to stop others from ripping you off if you are a Private Inventor 5 April 2014. There trials are completed in one or at most two days and the costs of  trial on liability are limited to £50,000. The costs in the Patents Court will be much higher.  Why the case was not transferred to IPEC is curious and that may be because nobody asked for such a transfer. That could be because the brothers and their company were unrepresented and the father, who was represented by Leeds solicitors and Manchester counsel, contested only his personal involvement in the infringement.

This case is worth reading for Mr Justice Arnold's analysis of the law relating to registered designs and unregistered design right infringement and the meticulous way in which he dissected the factual evidence against the father.  It is likely to be referred to in future cases on registered design and design right infringement. Finally, the claimant company has nothing to do with the seaside town. It is actually based in Crewe. It takes its name from its founder whose surname was Whitby.  If anyone wants to discuss this case or registered design and unregistered design right law with me after the Christmas holidays, call me on  01484 599090 or use my contact form.

CPD Event - "The Intellectual Property Act 2014 - What it means for you and your clients" Leeds 15 Oct 2014

Jane Lambert

On 14 May 2014 the Intellectual Property Bill received royal assent and became an Act. It implements several of Prof Hargreaves's recommendations including implementation of the Council Agreement on the Unified Patent Court, accession to the Hague Agreement and enhancement of the examiner's opinion service for patents and its extension to designs. More controversially it creates for the first time an offence of intentionally copying a registered or registered Community design.  My colleague Alex Rozycki and I gave a presentation on the new Act on the 19 May 2014. I also write my Reflections on the Intellectual Property Act 2014 in our IP and Tech law blog as well as detailed analyses on the effect of the Act on patent, registered designs and unregistered design right law.

There have been two important developments since them. The first is that Lady Neville-Rolfe, the Minister for Intellectual Property, has signed The Intellectual Property Act 2014 (Commencement No. 3 and Transitional Provisions) Order 2014 which brings many of the key provisions of the Act into force on 1 Oct 2014. The second (and potentially the more important) is the consultation on the Unified Patent Court which has just closed.

I shall be discussing those developments and much more besides in a talk that I am giving at the Leeds Business and IP Centre on the 15 Oct 2014 at 18:00 as part of Leeds Business Week. This is an in-depth seminar which should be of interest to specialist IP lawyers and patent and trade mark attorneys for which we plan to give SRA, BSB and, if it can be arranged in time, IPReg points. However, it will also be useful for business owners and managers of all descriptions in all industries as well as artists, designers, inventors and investors in start-ups and other high tech businesses.

Space is limited but you can reserve your place now by calling my clerk, George, on 01484 599090 or 020 7404 5252 or sending him a message through his contact form. I look forward to seeing you there.

Design Right and Registered Designs: Utopia Tableware v BBP Marketing

This was a claim for registered design and unregistered design right infringement in the new Intellectual Property Enterprise Court ("IPEC"). Both the claimant Utopia Tableware Ltd of Chesterfield and the first defendant BBP Marketing Ltd of Mirfield supplied glasses. At the start of the litigation Utopia applied for and won an interim injunction (see Utopia Tableware v BBP Marketing [2013] EWPCC 15 (21 Jan 2013)). However, the evidence on which it relied was found to have been concocted and Birss J referred the matter to the Attorney General under CPR 81.18 so that he could consider committal proceedings (see Utopia Tableware Ltd v BBP Marketing Ltd and Another [2013] EWPCC 28 (30 May 2013)). The action came on for trial before Mr Recorder Campbell on 24 Sept 2013 and he delivered judgment on 12 Nov 2013 (see Utopia Tableware Ltd v BBP Marketing Ltd and Another [2013] EWHC 3483 (IPEC) (12 Nov 2013)).

The Registered Design
Utopia had registered the following design with the Designs Registry under registration number 4021276 pursuant to the Registered Designs Act 1949:

The Design Right
The design document in which the design was recorded appears below.

Infringing Articles
The following photograph shows the glasses sold by each of the parties.  Utopia's appears to the left and BBP's to the right.

The Issues
The defendants admitted that they had copied the exterior dimensions of the claimant's design but not its interior measurements nor the wall thickness since their glasses were made out of polycarbonate rather than glass.  Having admitted copying of the exterior dimensions the defendants could hardly deny copying of the unregistered design or claim that their glass produced on an informed user a different overall impression from the registered design. Their defence was that the claimant's design was commonplace and lacked individual character.

Judgment
Mr Recorder Campbell found for Utopia on both points.

As for the "commonplace defence" the judge directed himself at paragraph [58] to identify the relevant design field for the purposes of the Act.  He decided at [69] that it was beer glasses.  Comparing

"The shape of the profile of the outer surfaces of the Claimant's Vessel, that profile in particular including, above a waisted section, an elongated tulip shaped section which tapers inwardly as it approaches the rim of the Claimant's Vessel,"

to similarly shaped glasses distributed by Amstel, Carlsberg and Peroni to promote their beers he concluded that that feature was not commonplace though other features were. As design right can subsist in any aspect of the design of part of an article the Recorder found that that was enough for design right to subsist.

Relying on Judge Birss QC's decision in Samsung Electronics (UK) Ltd v Apple Inc [2012] EWHC 1882 (Pat) (9 July 2012) which I discussed in  Apple v Samsung - compare and contrast 28 Aug 2012 NIPC law the Recorder identified the "informed user" as a beer drinker, held that the designer of a waisted glass had limited design freedom and compared Utopia's glass to the Amstel, Carlsberg and Peroni glasses. Having regard to those factors he concluded that the design did have individual character and was therefore valid.

He therefore held that both Utopia's design  right and the registered had been infringed.

Comment

Despite the submissions of Sir Robin Jacob, the leading scholars on intellectual property law, the Intellectual Property Bar Association and many others the government seems hell bent on its proposal to criminalize registered design right infringement. Had that proposal been law it is possible that the executives of two well established and highly regarded local companies would have been prosecuted, This question whether the registered design had individual character was difficult enough for an experienced intellectual property practitioner to resolve. It is hard to imagine lay justices and juries attempting a similar careful analysis. In a case such as this where the claimant's witnesses had acted particularly badly a conviction would have been intolerable.

Design Right: Albert Packaging Ltd. and Others v Nampak Cartons & Healthcare Ltd.

I've mentioned Judge Birss QC's judgment in Albert Packaging Ltd and Others v Nampak Cartons & Healthcare Ltd [2011] EWPCC 15 (2 June 2011) in IP Yorkshire because the defendant company is based in Leeds and was represented by a local law firm. This is an important case because it illustrates the limits of design right as a means of protecting investment in technology.

Why this case is important

In the last sentence of his judgement the learned judge held that the claimants had unregistered design right in the shape of their product in their assembled form and that it was "more likely than not" that that product was at least one of the sources of ideas for the defendant's products yet he found for the defendant. How could that be since s.226 (1) (a) of the Copyright Designs and Patents Act 1988 confers the exclusive right to make articles to a design on the owner of the design right? The judge's explanation was as follows:

"Design right is a right to restrain reproduction of the design by making articles to the design. That means copying the design so as to produce articles exactly or substantially to that design. When it comes to comparing the article alleged to infringe with the claimants' design in a case like this one, in which it can be seen that the article was in fact derived from multiple identifiable sources, it must be necessary to identify how much of the design of the article in question can be said to derive from the claimants' design."

He concluded that what the defendant's product owed to the claimant were the dimensions of the article which was not a substantial part of that design. To have found infringement given that all that had been derived were dimensions would have given design right to something that was no more than a method or principle of construction.

Method or Principle of Construction

I have italicized the words method or principle of construction because s.213 (3) (a) of the Act excludes those attributes from design right protection. There had been a corresponding provision in s.1 (1) (a) of the Registered Designs Act 1949 before the Registered Designs Regulations 2001 but there were not many cases on the point as it was rarely argued. The case most frequently cited was Moody v Tree (1892) 9 RPC 333 where Mr. Justice Vaughan Williams held that the pattern of a basket consisting of the osiers being worked in singly and the butt ends being outside could not be registered as a design. This case will be remembered for Judge Birss QC's explanation of the above italicized words in the context of unregistered design right.

Idea/Expression Dichotomy in Design Right

At paragraph [18] of his judgment, His Honour referred to the claimant's submission that

"although designs that serve purely functional purposes are not denied protection, it is important when identifying the aspect that is relied upon to have in mind that design right does not protect ideas per se (in the way a patent might) even though these ideas might have been important in arriving at the design in question."

He accepted that submission adding

"Design right only protects aspects of the actual physical manifestation of an idea."

Relying on Mr. Justice Mann's dicta in Rolawn Ltd and Another v Turfmech Machinery Ltd [2008] EWHC 989 (Pat) (7 May 2008) that "what is protected from copying in design right cases is the design, meaning the physical manifestation" and "not some underlying abstraction" and Lord Justice Neuberger's in Landor & Hawa International Ltd v Azure Designs Ltd [2006] EWCA Civ 1285 (28 July 2006) the judge propounded the following test:

"If it is possible to get several different appearances, which all embody the general features which he claims, then those features are too general and amount to a method or principle [of construction]. In other words, any conception which is so general as to allow several different appearances as being made within it, is too broad and will be invalid."

Comparative lawyers will immediately see the similarities between this and the somewhat cumbersome abstraction/expression filtration test in US copyright law best exemplified by Computer Associates International Inc. v Altai Inc. 982 F2d 693 (1992).

Is Design Right worth Having?

At paragraph [20] Judge Birss said

"This exclusion, and the 'interface exclusion', in s213 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."

He is of course right but was that the intention of Parliament? In the white paper Intellectual Property and Innovation (Cm 9712) the government of the day considered whether a copyright based approach or utility models would best protect small businesses' investment in technology and design and opted for the former. Significantly, its example was followed by none of the other common law countries that had previously protected industrial designs by artistic copyright. Australia has opted for "innovation patents" and the Republic of Ireland for short term patents. With these and the other exclusions of s.213 (3), the availability of licences of right to anyone in the world including infringers under s.237, the qualification requirements that exclude designers in most industrial countries from protection under the Act not to mention the possibility of a threats action which did not exist under the 1956 Act, there does not seem to be a lot of point to design right. Hargreaves called for a fresh look at design right law (see "Does Hargreaves Say Anything New" IP/IT Update blog 24 June 2010) and on this if on nothing else his review is dead right.

Unregistered Design Rights: Overview

Most people know that design right is a relatively new intellectual property right which was created by Part III of the Copyright, Designs and Patents Act 1988 ("CDPA") which came into force on the 1 August 1989. The right protects original designs (that is to say, the design of any aspect of the shape or configuration (whether internal or external) of the whole or part of an article. It is to be distinguished from artistic copyright that protects artistic works from reproduction under Part I of the CDPA and rights in new designs having individual character protected by registration under the Registered Designs Act 1949 as amended.

Legislative History
In its 1986 white paper, “Intellectual Property and Innovation” (Cm 9712), the government of the day recognized that the protection of functional articles under the Copyright Act 1956 was highly controversial. It noted the objections that:

• the term of protection, which was then 50 years plus the life of the author rather than the present 70, was far too long
• the existence and the term of the protection were uncertain because the right was unregistered and duration depended on the life of the author
• English law was at variance with international practice; and
• penalties for infringement were too high with the possibility of conversion damages as well as additional statutory damages.

The government considered but rejected a registration system for functional as well as aesthetic designs and an unfair copying law. Instead, it decided to "provide protection on copyright principles but without the more objectionable features of full copyright protection" such as the very long term and the possibility of conversion damages. Mindful of such cases as George Hensher Ltd. v Restawile Upholstery (Lancs) Ltd. [1976] AC 64 and Merlet v Mothercare Plc [1986] RPC 115 where the claim failed because the design had not been created in a drawing, the government decided to protect original designs rather than the media in which they were first expressed. The white paper proposals were implemented by Part III of the CDPA.

Primary Infringement
The section of the CDPA that defines primary infringement of design right parallels s.16 of the same statute which defines infringement of copyright. Just as s.16 (1) lists the acts that are restricted to the owner of a copyright, s. 226 (1) provides that

"the owner of a 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." 

As copyright in a work is infringed by doing or authorizing any of the acts restricted by copyright (s.16 (2)), design right is infringed by doing or authorizing anything that is the exclusive right of the owner (s. 226 (3)). "Making articles to the design" is defined by s. 226 (2) as "copying the design so as to produce articles exactly to the design." The adverb "substantially" echoes s.16 (3) (a) which provides that references to the doing of an act restricted by copyright in a work are to the doing of it in relation to the work as a whole, or to any substantial part of it.

The Case Law
In terms of litigation, Part III of the Act got off to a slow start. A recent article in the European Intellectual Property Review by Lionel Bentley and Alan Coulthard identified only a handful of cases most of which were unreported. However, the law was advanced greatly by the following decisions in 1997:

• Ocular Sciences Limited v Aspect Vision Care Ltd. and Others [1997] RPC 289
• Electronic Techniques (Anglia) Ltd. v Critchley Components Ltd. [1997] FSR 401
• Parker v Tidball [1997] FSR 680 and
• Farmers Build v Carier Bulk Materials Handling (1997) 26 March (Rattee J).
  

Ocular Sciences
In Ocular Sciences the plaintiffs claimed design right in 19 "families" of lens designs. The "lenses" in each family varied in size by microscopic amounts. The plaintiffs contended that a separate design right subsisted in each and every lens design of each and every "family" and alleged that the defendants had infringed those design rights by making contact lenses to some 200 of those designs. Laddie J found that there had been no copying but added that the claim would have failed on the following grounds:

• design right in any feature that enabled a lens to be inserted into an eye was excluded by the "must fit" or "interface" exception of s. 213 (3) (b) (i) of the Copyright Designs and Patents Act 1988 ("the CDPA"), and
• all other features of shape and configuration on which the plaintiffs relied were "commonplace" within the meaning of sub-section (4).

Critchley
The plaintiff claimed design right in the designs of a plastic box and a magnetic core and plastic bobbin that it contained. The defendant relied on the previously mentioned "must fit" exception. The plaintiff applied to strike out that part of the defence on the ground that the exception did not apply to a component of the relevant article. Laddie J dismissed its application holding that the exception might apply to internal components.

Parker v Tidball
The designs in which the plaintiff claimed design right were of 6 leather cases for mobile telephones. The defendant relied on the "must fit" and "commonplace" exceptions. The deputy judge considered the design features of each of those cases holding that design right subsisted in some of those features but not in others. He concluded that the defendant had copied several features in which design right subsisted.

Farmers Build
The plaintiff commissioned the defendant to design and make a slurry separator based on existing designs but with some features of its own. Before the contract was performed the defendant terminated it owing to the plaintiff's financial difficulties and started to manufacture its own machine. The defendant's machine was similar to the one that it had been commissioned to produce. The plaintiff claimed that design right subsisted in the machine as a whole and in each of its components, that it had acquired those rights by virtue of its commission and that the defendant had infringed those design rights by making a machine and components to the plaintiff's design. Rattee J agreed that design right subsisted in those designs, that the plaintiff owned them and that the defendant had infringed them, but he gave judgment to the defendant on the ground that the plaintiff had acquiesced in the infringement.

Comment
An interesting feature of those cases is the different approaches as to whether or not there had been an infringement. When considering whether a copyright has been infringed an English court will take the work as a whole and see what (if anything) has been taken. If it is a "substantial part" - that is to say, a qualitatively important part of a work - then, absent other defences, there is an infringement. A very small part of a work can be substantial. In Exxon Corporation v Exxon Insurance Consultants International Ltd. [1982] RPC 69 Graham J suggested obiter at 79 that the noun "Jabberwock" could be a "substantial part" of Lewis Carol's "Through the Looking Glass". By contrast, if what has been taken is unoriginal it cannot be a "substantial part" however long it may be because copyright subsists only in original works. The best example of that approach isWarwick Film Productions Ltd. v Eisinger [1969] 1 Ch 508 where the material that had been reproduced was the transcript of a trial. The advantage of this approach is obvious from a comparison of English and American case law. In America there is often considerable argument over whether copyright subsists in a fragment of a work and the courts have had to devise complex filtration tests to identify illicit reproduction.

As it was the legislature's intention that copyright principles should be applied, a similar approach might have been expected in copyright cases. According to the article by Mr. Bentley and Mr. Coulthard, Rattee J adopted that approach in Farmers Build. They say that he held that design right subsisted in a composite configuration of three machine parts notwithstanding that a feature of one of those parts was excluded from protection by the "must fit" exception and another was excluded by the "commonplace" exception. However, Mr. Robert Englehart QC rook a very different approach in Parker v Tidball. He took as his starting point the following words of Laddie J from his judgment in Ocular Sciences at page 432:

"The proprietor can choose to assert design right in the whole or any part of his product. If the right is said to reside in the design of a teapot, this can mean that it resides in the design of the whole pot or in a part of the pot such as the spout, the handle or the lid, or indeed part of the lid. This means that the proprietor can trim his design right claim to most closely match what he believes the defendant to have taken. The defendant will not know in what the alleged monopoly resides until the letter before action or, more usually, the service of the statement of claim. This means that the plaintiff's pleading has particular importance. It not only puts forward the claim but is likely to be the only statement of what is asserted to be the design right."

Mr. Englehart dissected each of the designs finding that some features of each design were excluded by the "must fit", "commonplace" or other exception and others were not. Taking the features that were not excluded he looked at the defendant's case to see whether or not that feature was present. On finding that it was, and in the absence of a reasonable explanation from the defendant, he held that there had been copying. He made no qualitative analysis of the functional or other value of the allegedly reproduced feature.

It is submitted that the approach of Rattee J is to be preferred as it is closer to the policy of the Act. Upon closer analysis, Laddie J's judgment in Ocular Sciences does not actually conflict with that of Rattee J. The above dicta appear early in the portion of the judgment on the design right issue and rightly stress the importance of precise identification of the integers of the claim. It is obvious from his comprehensive if concise summary of the technical evidence on pages 423 and 424 that Laddie J had in mind the functional importance of the features alleged to have been copied. However, he did not need to discuss it in his judgment because the plaintiffs had failed to prove that their individual lens designs were copied into the defendants'. Any other approach would lead to absurdity and injustice as it is usually possible to find some common features in any two competing products if one looks closely enough. Many of those similarities will be knocked out by the "commonplace", "must fit", "must match" or "commonplace" exceptions but it is possible to envisage some that might not. It is difficult to believe that it was Parliament's intention that a manufacturer should deprive consumers of a competing product merely because his competitor copied a trivial detail. The old law would have dealt with the problem by regarding such copying as insubstantial and it is inconceivable that the current law does not do likewise.

First published in the Northern Intellectual Property Review in June 1997. Also in IP/IT Update