Neptune’s kitchen designs infringed? No, the DeVOL is in the detail

The IPKat is delighted to host the following analysis of a recent design decision (UK unregistered design rights) by Katfriend and regular contributor Darren Meale (Simmons&Simmons).

Here’s what Darren writes:

“This one is about designs and most of it is devoted to the complicated subject of UK unregistered design rights (UKUDR).

As well as giving us a handy illustration of UKUDR in action, it also firmly answers an important question about the scope of UKUDR following its amendment in 2014.

The case is Neptune v DeVOL Kitchens [2017] EWHC 2172.

Facts

Neptune makes kitchens. So does DeVOL. At one stage, DeVOL, which previously focused on its “Classic” kitchen, sold Neptune’s “Chichester” kitchen. While it sold the “Chichester”, it designed its own “Shaker” range. In 2010, the DeVOL ceased to sell the Neptune and the companies went their separate ways, DeVOL selling the “Shaker”. In 2015 Neptune sued DeVOL, claiming the “Shaker” was a copy of and infringed its design rights in the “Chichester”.

What rights did Neptune rely upon?

By trial, Neptune relied upon one RCD (registered Community design) and UKUDR.

Because it is an unregistered right, and because of the flexibility in its scope resulting from the way it is defined in legislation, UKUDR often has something of “make it up as you go along” feeling to it. As the courts have previously recognised, a defendant may not know the scope of the claimed UKUDR monopoly asserted against it until it reads the claimant’s particulars of claim – and then it may find itself alleged to have infringed an array of different pleaded designs.

UKUDR may be claimed in “[any aspect] of the shape or configuration… of the whole or part of an article”. That gives plenty of options: you can rely on the article, its shape, its configuration, the shape of one part or another part, and so on. Until recently, you could also rely on “any aspect” of all these things.

Not any aspects anymore

The words “any aspect” were deleted by the Intellectual Property Act 2014. The intention of Parliament, as the Explanatory Notes to the act make clear, was to limit the scope of UKUDR and “reduce the tendency to overstate the breadth of unregistered design right and the uncertainty this creates, particularly in relation to actions before courts”. Several years later, questions remained as to whether or not the change was retrospective. Hearing the case, Mr Justice Henry Carr held:

1.    Acts of infringement committed prior to 1 October 2014 (when the amendment came into force) are still to be judged by the old law, ie, UKUDR is broader and includes “any aspect” prior to this date.

2.    Acts of infringement committed after 1 October 2014, even if what is infringed is a UKUDR which existed prior to that date, are judged by the new law. So for such acts, a rights owner cannot rely on “any aspect”.

These conclusions are fairly sensible, but at least three cases have looked at this but not decided the points – so it is good to have clarity.

The judge also gave a little guidance on how to distinguish “aspects” from “parts”: “In my view, aspects of a design include disembodied features which are merely recognisable or discernible, whereas parts of a design are concrete parts, which can be identified as such”. Although this begs the question of what a “concrete” part means…

How many different designs can Neptune rely upon?

Even without “any aspects”, it is still common for claimants to plead many different unregistered designs. In the context of a kitchen, this might be (a) the kitchen as a whole; (b) an under sink cabinet; (c) a worktop design; (d) the combination of (b) and (c); (e) the door of the cabinet; (f) the cabinet handle; (g) the combination of (e) and (f); and so on. In this way things can get silly: I have seen claims before in IPEC and High Court litigation where there are approaching 100 possible different designs, once one breaks down what is being pleaded.

Alive to this issue – which makes litigating in any reasonable way impossible – Henry Carr J case managed the claim (which was heard under the Shorter Trials Scheme) to pin the parties down to six designs – three of which were selected by Neptune; three by DeVOL. This was half the number originally relied upon by Neptune. With hindsight, says the judge, it would have been better to limit them to a single design each (Merpel thinks it is unusual for a defendant to be asked to select the case against it, presumably here it would just pick out the three designs where the claimant’s case was obviously weakest).

You can see images of all of the designs relied upon, including the RCD, here.

Could Neptune ignore features of its chosen designs to get closer to the alleged infringement?

Wouldn’t it be convenient if you could strip your design of the bits that aren’t copied, then win your case on what was left? It turns out that UKUDR does, to an extent, let you do just that. Because it is ok to claim part of an article as the basis of your rights, you can logically disclaim other parts. One of the striking differences between the designs in this case was the presence of distinctive cock-beading (warning: don’t Google this*) on the Chichester which was not present on the Shaker. It was permissible for Neptune to claim the design of the Chichester with the beading removed, to which it also removed handles, screws and some brackets and top panels.

*Only joking. This is a type of beading not uncommon in carpentry. If you Google it, you’ll just see pictures of wood.

Was there infringement of UKUDR?

I won’t repeat the tests in any detail – UKUDR requires proof of copying, and the infringer must copy the design so as to produce articles exactly or substantially to the design (note the judge’s distinction between this test and the substantial reproduction test in copyright, at paragraphs 49-53).

Copying of an idea is not protected – it is the physical manifestation of that idea which can be infringed.

Henry Carr J considered the six unregistered designs chosen by the parties. Neptune’s claim for infringement failed on all of them. For only two was the judge willing to find that there had been copying – first, DeVOL had copied the idea of saw tooth shelving present in one of the designs for a cabinet. Second, DeVOL had copied the idea of a curved end cabinet of another design. But there was no copying of the physical manifestation.

So the UKUDR claim failed.

What about the RCD?

As if to demonstrate how much simpler RCD infringement claims can be, this claim was dealt with in nine paragraphs – the UKUDR claim occupied more than 100. The judge held that there were only two “features of importance” in what was an otherwise banal design for a cabinet/chest of drawers (see it here), one of which gave the design enough individual character to defeat DeVOL’s counterclaim for invalidity against it.

But this feature – the “interesting cutaway” shape on the sides of the cabinet – was not reproduced in the Shaker designs. So, no infringement.

A sensible decision on the menace that is UKUDR

Whenever I explain UK design law to someone unfamiliar with it, I tend to start with an apology for its complexity. As things stand, “design law” can cover as many as four rights in the UK, and possibly copyright too. The law of RCDs is perhaps the most (relatively) straightforward, although the UK is (very sadly) likely to be leaving the purview of that system when it leaves the EU. We do of course have UK registered designs, and the law there is largely the same, so expect to see these fall back in favour (no one really bothers with them nowadays, do they?).

Unregistered EU design – which lasts no more than three years – doesn’t get much press. That should go too with Brexit, another shame as rights owners see their rights stripped away. Will UKUDR fill the gap? There are many reasons why not. But UKUDR is quite powerful. As noted above, a designer can essentially make up what it says its rights are once it has seen an alleged infringement appear on the market, and it can lawfully do so in an immensely complex way. Only robust case management can deal with the menace of a pleading covering multiple articles and parts of articles, even now that “any aspect” has gone. Perhaps, with Brexit necessitating at least some thinking about how we want to deal with designs in the UK, the opportunity can be taken to try and fix UKUDR – rather than leaving it to judges once litigation has got underway.

I should sign off with a personal note: this article is written in my capacity as a solicitor, not as an IPEC Deputy District Judge where I have heard similar cases to this. But that said, anything that gives clarity to interested parties, including the court, must be a good thing whoever you are.”