Lord Justice Jacob has just delivered his first Court of Appeal judgment today in A Fulton Company Ltd v Totes Isotoner (UK) Ltd were rival manufacturers of cloth cases for portable folding umbrellas. Since those umbrellas folded into an oblong shape, the cases which housed them were also oblong. Fulton's "Miniflat" cases were of an open flat box construction with a cuff, which had a slit in one corner to facilitate insertion of the umbrella. The stitching along the lines of the case gave it a sharp box-like appearance. Totes' cases were initially straight copies of the Miniflat case. However, once they heard of Fulton's registered design rights, Totes changed its cases by removing one short side of the cuff altogether and making a 'cut out' design. Fulton alleged infringement of its unregistered design right on the basis that the 'cut out' design had been made by copying the design of part of the article and was an exact reproduction of that part. The trial judge (Judge Fysh in the Patents County Court) held that Fulton was entitled to unregistered design right in the 'cut out' design and that totes' cases infringed that right. Totes appealed, contending that the law conferred no separate unregistered design right in a design for only part of a product. Only one thing had been designed, the Miniflat case as a whole, and they had used the 'cut away' design, this being a different design which Fulton had not envisaged. The Copyright Designs and Patents Act 1988, s. 213(2) provided that "design" meant "the design of any aspect of the shape or configuration (whether internal or external) of the whole or part of an article". Under the same Act, design right did not subsist in a method or principle of construction or in "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. ...".

The Court of Appeal dismissed the appeal, holding as follows:
1. A designer who finds that part of his design had been copied is entitled to complain, even if the remainder of the design hasn't been copied.
2. It was clear from s. 213(2) that unregistered design right subsists in any aspect of the shape and configuration of part of an article. The change to the design in this case didn't alter the whole design and thus a different overall design, since part of the copied design was to be found in the alleged infringement.
3. There was nothing in the word 'aspect' which narrowed the meaning of s. 213(2), since the notion conveyed by that word in the composite phrase 'design of any aspect of the shape or configuration of the whole or part of an article' was 'discernible' or 'recognisable'.
4. Totes' argument overlooked the exceptions provided for by s. 213(3) of the Act, particularly the 'must fit, must match' exceptions, which were features of the shape or configuration excluded from the subsistence of design right and which, if present, were parts of an article.
5. A designer was entitled to prevent the copying exactly or substantially of part of his design, unless that part was excluded from protection because it was not original or fell within the must fit, much match exceptions. Since Totes had copied an aspect of part of the Miniflat case, it had infringed the design right.

The IPKat didn't think this appeal ever had a chance of succeeding and marvels that it was brought at all. Jacob LJ reviewed the literature on the scope of design protection, going all the way back to 1990, as well as all the cases, and could find no merit in it.

Click here for umbrella covers and stands
Things to do with umbrellas here and here
Umbrellas in art here, here and here
Umbrellas in culture here and here
Umbrellas in nature here

TOTES LOSE UMBRELLA CASE CASE TOTES LOSE UMBRELLA CASE CASE Reviewed by Jeremy on Wednesday, November 05, 2003 Rating: 5

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