Design right all locked up

Lockers - design right

The Intellectual Property Enterprise Court (IPEC) recently considered the various principles that apply when assessing infringement of UK unregistered design right (UDR).

Unregistered design right

A UDR protects the shape and configuration of an article, and automatically attaches to any original design once it has been recorded in a design document, or an article has been made embodying the design.

Action Storage Systems Limited (Action) brought a claim against G-Force Europe.com Limited and Fletcher European Containers Limited (Defendants) for infringement of UDR in its “eXtreme” storage lockers.

As is often the case in design right proceedings, the Defendants attacked the validity of the design on a number of grounds.

Originality

Firstly, in the Defendants’ view, the eXtreme locker design lacked originality in that it was copied from prior designs. However, at the outset the Defendants admitted that five features of the design were, in fact, 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 section at the base. Even though Action designed its eXtreme locker with an earlier “Remcon” locker “very much in mind”, judge Hacon considered that there were sufficient differences that the eXtreme locker, as a whole, was original.

Commonplace

Accordingly, Hacon went on to reject the Defendants’ argument that the design of the eXtreme locker was commonplace in the design field in question.

Method or principle of construction exclusion

The Defendants’ argument that the design resulted from a method or principle of construction was also unsuccessful as it was evident that the functions can be achieved by a number of different designs.

“Must fit” exclusion

Finally, the Defendants were partially successful in arguing that the top and bottom of the locker should be excluded from UK UDR. As the lockers were designed so that they were stackable, the top and bottom of the lockers connected so as to prevent the lockers from toppling over. As such, even though this wasn’t a secure fit, the Defendants ‘must fit’ argument was successful in relation to these features.

Infringement

As a result, the Defendants’ “SuperTuff” lockers were found to have infringed Action’s UDR in:

  • the overall dimensions and proportions of the lockers;
  • the shapes and oval indentation for applying the label on the front of the locker;
  • the shape of the side of the locker; and
  • the shapes of the rear of the locker.

Comment

Perhaps the most pertinent takeaway from this case is the use of design charts in the proceedings to identify the significant features of designs. The design charts submitted by Action outlined the features of the earlier design, Action’s design and the Defendants’ designs. Action was praised for using these design charts, which the judge considered extremely useful, and recommended all litigants attempt to use these in design right disputes.

This case highlights that UDR can be a useful weapon in the intellectual property arsenal for designers in enforcing their intellectual property rights. Tidman Legal is proud to advise a number of designers in relation to the protection and enforcement of their designs. If you would like advice on any of the issues highlighted here, please feel free to give us a call.

Tidman Legal is an Edinburgh-based firm of specialist intellectual property lawyers.