Litigants in person can often face difficulties when tackling the complexities of IP law, the case of Barber v Wakefield & Ors [2024] EWHC 3058 (IPEC) is no exception. In this case, neither side was represented.
This dispute revolved around the design of a letterbox tool and presented several legal and practical challenges.
Background to the case
The claimant, Simon Barber, alleged that a prototype tool developed by the defendants infringed his registered design. The defendants, Steven and Simon Wakefield, along with their company Ultimate Tools Limited, contested this claim. The tool in question, described as a "letterbox tool," is used to gain entry through a door by manipulating it via the letterbox. As the judge put it:
A letter box tool is characteristically used by locksmiths, security agents and sometimes by the police. Typically such individuals use the tool to assist those who have locked themselves out of their home. Other users could be imagined but they are not relevant to this judgment.
The fact that such tools exist is a helpful reminder of the value of investing in a letterbox protector to reduce the risk of a break in using this sort of tool!
Not a small claim
Although the case originated in the IPEC Small Claims Track, it was transferred to the main IPEC track due to the nature of the dispute, which fell outside the small claims jurisdiction for registered designs. His Honour Judge Hacon streamlined the case to focus on various core issues relating to the registered design’s validity, individual character, technical function, and alleged infringement.
Key issues addressed in the judgment
Validity of the registered design. Both parties agreed that the registered design was valid as of the date of registration (19 February 2013), confirming its novelty and individual character.
Technical function and the ‘must fit’ exclusion. The defendants argued that certain aspects of the design were dictated by technical function or fell under the ‘must fit’ exclusion. However, Judge Hacon determined that the design afforded significant freedom for variation beyond its basic U-shape, and the exclusion did not apply in this case.
What if a product can be assembled in multiple configurations, only some of which infringe? This issue has not been considered by any of the UK courts. However, in Bike First International, a Dutch court found that selling kits for self-assembly bicycles did not constitute infringement where the non-infringing configuration was the default. The court reasoned that the potential for consumers to assemble the bicycle in an infringing way was insufficient without explicit directions to do so. As Hacon noted, this principle must be construed narrowly as allowing a product to evade liability solely because it can theoretically be assembled in a non-infringing way could undermine the protection offered by registered designs. There were no instructions here so this point did not affect the infringement question.
Assessment of infringement. The central question was whether the prototype tool created a "different overall impression" on the informed user compared to the registered design. After analysing the visual similarities and differences, Judge Hacon found that the prototypes did not produce a sufficiently different impression. Sadly, the images are not included in the version of the judgment that is currently available so we cannot make this assessment ourselves.
Use and marketing of the accused design. Despite the prototypes being publicised at trade fairs and in media posts, Judge Hacon ruled that they had not been sold commercially. Acts of making and using the prototypes for testing were deemed non-infringing under the exception for private and non-commercial purposes.
Future risk of infringement. While the court found no infringement had occurred to date, Judge Hacon recognised the potential for future infringement if the defendants were to market tools resembling the prototypes. To mitigate this, he granted an injunction prohibiting the marketing of tools that would infringe the registered design.
What does this mean?
This judgment reinforces the importance of balancing legal principles with practical realities, particularly when litigants in person are involved. Key takeaways include:
Scope of design protection: Registered designs protect the visual appearance of a product but exclude features dictated solely by technical function or the need to fit with other products. Designers should ensure that their registrations capture unique, non-functional elements to maximise protection.
Private and non-commercial acts: Making or using a design prototype for private testing may not constitute infringement. However, once a design enters the commercial sphere, even indirectly, the scope of potential infringement widens.
Clarity on configurations: When assessing infringement, the court may focus on the likely configuration of a product as used by end users. Multiple configurations of a prototype do not automatically shield a defendant from liability.
Future enforcement: Even where no past infringement is found, the court can issue an injunction to prevent future infringements. This underscores the value of proactive legal action to protect registered designs.
This case serves as a reminder of the complexities of design law and the importance of considering both the letter and the practical implications of legal provisions. For businesses and individuals alike, it highlights the critical role of clarity and precision in registered design disputes.
To find out more about the issues raised in this blog contact Rosie Burbidge,