How do UK unregistered designs work in practice?
UK unregistered design right (UK UDR) is a handy IP right which is often overlooked by rightsholders. It protects the shape or configuration of the whole or part of a product for ten years from the date the design was first (or 15 years from the date it was first recorded in a design document if that period is shorter). UK UDR does not protect surface decoration (unlike Community unregistered design right and registered designs). Since the recent procedural reforms in the Intellectual Property Enterprise Court (IPEC), there have been a lot more design right cases but the level of public awareness of designs remains fairly low. A recent IPEC case, Action Storage v G-Force Europe  EWHC 3151 (IPEC) (07 December 2016) considered what UK UDR resided in some plastic storage lockers (if any). The scope of UK UDR protection UK UDR is not a new right but on 1 October 2014 the words "any aspect of" were deleted from its definition. This means that section 213(2) Copyright Designs and Patents Act 1988 (CDPA), which sets out the statutory definition of a design now reads: "in this Part 'design' means the design of any aspect of the shape or configuration (whether internal or external) of the whole or part of an article".What does the removal of these three words mean and when does the change take effect? The removal of the words could mean: (i) abstract designs which are not tied to a design drawing or article are no longer permitted; or (ii) nothing at all - the view the authors of Copinger (17th edition) . Similarly, the timing for this change (or lack of change) could (i) be retrospective; (ii) apply to all cases commenced after 1 October 2014; or (iii) apply to all designs created after 1 October 2014. Unfortunately, HHJ Hacon was not required to clarify either issue and did not do so.
What was the design?
The design was embodied in the eXtreme locker itself images of which are set out below. The first question to be considered was: is the design original?
The Defendants accepted that five features of the claimant's "eXtreme locker" were original: (i) the overall dimensions and proportions; (ii) the shape and dimensions of the raised section on the top; (iii) the shape and dimensions of the ribs at the side; (iv) the shape of the border and inset squares at the rear; and (v) the shape and dimensions of the inset sections at the base. The Claimant accepted that they had used a third party locker, the Remcon locker as the starting point for the design as Mr Briarley, a witness for the claimant put it Action Storage was not interested in "reinventing the entire wheel" . Nevertheless, the Claimant had made substantial changes to the Remcon design, including to the vents, label indentation, position of the lock and the removal of the handle. As HHJ Hacon noted, the Defendants' allegation that the design of the whole locker lacked originality "did not get off to a flying start" as they had admitted that five features of the locker were original . His conclusion that the design was original was therefore unsurprising .
Was the design commonplace?
The Defendants attempted to delay identifying commonplace features in detail until expert evidence was filed (rather than when filing the Defence at a much earlier stage in the proceedings). The judge was unimpressed. As he put it "[i]f a defendant has in mind a properly reasoned argument that a design is commonplace, he must be aware of prior art, which cannot be obscure, embodying the significant features of that design." . The Defendants only identified one earlier design (the Remcon) as both prior art and to argue that the design was commonplace. Therefore, they had to prove that the Remcon design was commonplace pre 2005 (when the Claimant's design was created). By way of reminder, the judge summarised the relevant principles to be followed when identifying a commonplace design:
A defendant alleging that a design is commonplace should plead the significant features of the design as he contends them to be, the prior art relied on in which those features are said to be found and the date from which each cited item of prior art was available to designers in the relevant design field.
Prior art which renders a design commonplace will not be obscure. The evidential burden rests on the defendant to show that it is not.
A design will be commonplace if it is shown to have been current in the thinking of designers in the field in question at the time of creation of the design, see Lambretta Clothing Co Ltd v Teddy Smith (UK) Ltd  RPC 6 at . Another way of looking at this is that a commonplace design will be one which is trite, trivial, common-or-garden, hackneyed or of the type which would excite no particular attention in those in the relevant design field, see Ocular Sciences Ltd v Aspect Vision Care Ltd  RPC 289, at p.429...
The design field in question is that with which a notional designer of the article in issue is familiar, see Lambretta Clothing at .
A design made up of features which individually are commonplace is not necessarily itself commonplace. A new combination of run-of-the-mill features may not be commonplace. See Ocular Sciences at p.429...
If the designer of the accused article has expended sufficient skill and labour to make his design original (in the copyright sense) over a single piece of commonplace prior art, he is liable also to have succeeded in creating a design that is not rendered commonplace by that prior art.
The Defendants' expert failed to provide any basis for the Remcon design being commonplace. Consequently the Defendants were locked out of that line of attack.
Were parts of the eXtreme locker a "method or principle of construction"
Hacon considered Mann J in Rolawn v Turfmech  EWHC 989 (Pat) who considered that the prohibition against protecting methods or principles of construction effectively meant that abstract variants of a design are not permitted . He considered that there "will be rare cases in which there is only one way to achieve a method and principle of construction" by using a specific design but this was not such an occasion . As HHJ Hacon put it "the restriction of the scope of design right to the features of a specific article or party of an article... will almost always... prevent a design right owner from claiming protection in relation to a method or principle of construction". Did the "must fit" exclusion apply?
By this stage in the judgment it looked like the Claimant might have unlocked the key to this case but two further barriers remained - negotiating the must fit exclusion and, most importantly, establishing infringement. The "must fit" or "interface" exclusion comes from section 213(3)(b)(i) CDPA. It essentially excludes from design right protection any otherwise protectable design features which enable the whole or part of a product to be connected to something else in order to perform a function. This interface could be with anything from another product to a human eyeball (see Ocular Sciences). The original purpose of this exclusion was to prevent design owners from preventing the sale of spare parts. Even if a feature performs two functions (e.g. it interfaces with another product and is aesthetically pleasing), that feature is still excluded from design right protection. The disputed lockers were designed to be stacked. The Defendants therefore argued that the top and bottom panels were excluded from design right protection. Although the shapes of the top and bottom panels do not "interact so securely that the lockers can be stably stacked without further support" . The judge nevertheless considered that there was sufficient precision in the "fit" for this exclusion to apply. This did not render the design invalid but simply meant that the top and bottom panels were not considered as part of the design.
To establish primary infringement the Claimant had to show (1) copying had occurred and (2) the alleged infringing articles were made exactly or substantially to the Claimant's design. Secondary infringement requires knowledge or reason to believe that the lockers were infringing. As Lewison J pointed out in Virgin Atlantic v Premium Aircraft  EWHC (Pat) "it is not easy to conceive of real facts (absent an incompetent copyist) in which a design is copied without the copy being made exactly or substantially to the copied design" . Which as Hacon noted in DKH Retail at  isn't a million miles away from the maxim: "what's worth copying is worth protecting" (originally proposed by Peterson J in University of London Press v University Tutorial Press ("ULP")  2 Ch 601 at 610, which is sadly not on Bailii). Hacon set out the approach he followed in . Essentially, if no copying was identified, it was game over for the Claimant but once copying is found, the Claimant has to jump through a few more hoops such as disregarding features which are not protected (e.g. due to falling within a "must fit" exclusion or failing the originality test). As far as secondary infringement is concern, a mistaken understanding of the law is not sufficient to avoid knowledge provided the Defendants were aware of all relevant facts. In practice, this meant that the top and bottom panels were not considered as part of the design. Nevertheless, the judge did not take long to conclude that primary infringement had occurred  to . Secondary infringement was admitted after receipt of the Claimant's cease and desist letter but the Defendants attempted to argue that prior to that date, the Defendants believed the Claimant's lockers to have copied the Remcon and consequently did not benefit from design right protection. Although the judge accepted that this view was honestly held, it was not sufficient to avoid secondary infringement because the Defendants knew all of the relevant facts and applying them incorrectly did not mean they could avoid secondary infringement.
And finally... design charts
The key takeaway that the judge wants practitioners to take away from this case concerns pleadings and design charts - he devotes the final five paragraphs of the judgment to this issue. The judge noted that design charts can help to clarify issues in dispute and greatly assist the court and both parties should engage with the charts as much as possible. Jessie Bowhill came in for particular praise for her "extremely useful" charts listing the significant features  and . The judge's clear preference for future UK UDR claims is as follows:
all significant features of the design are set out in the Particulars of Claim together with the extent to which those features appear in a defendant's product;
the defendant should either accept this list of features or propose amendments to it; and
the defendant should admit or deny the presence of significant design features in its products.