A BIT OF LIGHT READING

The IPKat has been provided with a copy of the Patents County Court’s recent design decision in Woodhouse v Aquilla and Urbis by both Michael Edenborough and Richard Davis, both of Hogarth Chambers.

Woodhouse commissioned Creactive and LDL to design a range of street furniture that became known as the Geo range. Creactive designed the Geo lantern (street light) which was the subject of the design infringement case. LDL designed the rest of the range. However, LDL applied for the registered designs for the whole range, including the lantern in its own name, giving simplicity and convenience as its reason for adopting this course of action. The application took place before the new registered design regime came in in 2001.

Aquilla produced its own lantern named the Polo. Woodhouse claimed that the Polo infringed its Geo design. Aquilla countered that (i) the registered design was invalid since it had been applied for by LDL, a person who was not the proprietor of the design right in the Geo lantern and (ii) in any case the Polo lamp did not infringe the registered design of the Geo lamp.

The validity of the registered design

*A bona fide claim to be the proprietor of a design right is insufficient to ensure its validity. Instead, the test is objective – the applicant must be rightfully claiming to be the proprietor of the design.
*Although LDL had purported to assign the design to Woodhouse in 2002, this assignment was not effective because LDL was not the proprietor of the design and so could not transfer ownership of it.
*At the time of LDL’s application, Woodhouse did not even have an equitable interest in the design since it did not pay for the work until a month after the application. It was the contractual conditions at the time of that payment that transferred the interest in the design from Creative to Woodhouse.
*Aquilla was a “person aggreived” by the registration, even though it was not the rightful proprietor of the registered design.
*The correct course of action was for the registered design for the Geo lantern to be cancelled.

Registered design infringement

Although the registered design was invalid, Judge Fysh considered the question of infringement in case he was found to be wrong on the question of validity on appeal.

The correct law

Although the design was registered under the “old law”, the acts of infringement occurred after 9 December 2001 and so were governed by the New Act.

The informed user

Registered design infringement under the New Law is judged according to the impression that the designs make on the “informed user”. There was no authority on the qualities of this individual, however…

*The informed user must be a regular user of articles of the sort which is the subject of the registered design. He may be a consumer or user, but is not a manufacturer of such goods or the average man in the street.

*“Informed” imports the suggestion that the user is familiar with what is, or has in the recent past been, in the market.

*Since this was a design law matter, eye appeal, rather than familiarity with the underlying technology is what’s relevant. An analogy with the “man skilled in the art” who inhabits patent law would not be helpful.

*In this case the informed user was a regular member of an urban development who is mostly interested in the way street furniture looks, but may have a basic understanding of the product’s technical features and cost.

*The comparison of designs had to be made as if the lanterns were in situ located 8-10 meters above grounds level, even though the lanterns would be shown to the reasonable user at ground level when he was deciding whether to purchase them.

Which parts of the design were relevant to the comparison?

*While the lantern, and not the bracket, was the most important functional, visual and aesthetic feature of the design, the bracket could not be ignored in the comparison. However, it was appropriate to conclude that the informed user would pay somewhat more attention to the appearance of the lantern than the bracket, particularly because the brackets were often supplied separately and it was the lantern element that was really what was strikingly different from previous designs.

*Were it to be the case that the registered design covered the lantern alone, it would be surprising if no infringement was found, considering that Aquilla had admitted unregistered design right infringement with respect to the lantern. However, the registered design right did not cover the lantern alone.

Was there infringement?

*The difference between the brackets as featured in a brochure for the Polo design and the Geo brackets removed the Polo lanterns featured from the scope of the design.

*The sale of the Polo lantern alone did not infringe. Therefore, installations of the Polo lantern, but not the bracket, in Bradford and Winchester did not infringe.

*Placing multiple lantern/bracket combinations at the same height on the same pole could be regarded as multiple single units conjoined and as a result, the multiplicity of the units had no effect on the issue of infringement.

*Of the other Polo combinations including brackets put before the court, only one installed at Bradford infringed, since only this combination had substantially horizontal arms with visible gussets beneath the horizontal arm.

The IPKat says, it’s common sense, but if you’re commissioning someone to design something for you, don’t get your other contractors to apply for the design registration for you. Also, it’s best to get things sorted out from the outset and to make it clear when you employ someone to create something in which IP rights may vest who will own those rights. Merpel says, if you have a visible gusset beneath your arm you’re in serious trouble.