[Guest Post] J Mac v Q Deck - an object lesson in unregistered designs

Katfriend Rebecca Newman (Addleshaw Goddard) comments on the recent decision in J Mac Safety Systems Ltd v Q Deck Safety Systems Ltd [2025] EWHC 2241 (Pat), where a claim for infringement of UK unregistered design right succeeded. It covers some interesting points around must-fit and the interesting feature of UKUDR where claimants can specify the design relied on. Rebecca writes:

"This Katfriend loves a recap case - particularly where it involves technical design law, detailed application and…mats. 

Worth setting you up at the start - it's not the most fascinating subject matter, or a particularly surprising judgment. It is however a very helpful illustration of how UK unregistered designs (UKUDR) apply to functional and modular products. It’s full of surprisingly transferable examples showing where the line gets drawn on subsistence and enforcement in practice. 

Photo by Nina Mercado on Unsplash

Background

The story begins with Q Deck Safety Systems Ltd (the Defendant) being a customer of J Mac Safety Systems Ltd (the Claimant). The Defendant bought about £1 million of the Claimant's "Macdeck" safety decking systems, to rent out on construction sites. However, all good things come to an end and in 2020, the Defendant sought to renegotiate its arrangement with the Claimant to reduce costs. Attempts at pivoting to a franchise or distribution model were unsuccessful. The Defendant decided to design its own safety decking system, the Q Deck system, which was “lighter, faster and easier to erect” (read, cheaper).

The Claimant was not best pleased and claimed passing off and UKUDR infringement (having dropped its registered design case at an earlier stage in proceedings). The Defendant submitted to judgment on the passing off claim at the start of proceedings, so the written judgment dealt only with UKUDR infringement. There were various designs pleaded but sufficient for present purposes to focus on: (1) the Macdeck Panel and (2) the Macdeck Panel Perimeter Design.

Pleaded designs

In contrast to registered designs (where infringement is assessed based on overall impression) designers enjoying UKUDR protection are entitled to prevent someone from copying a part of their design, even if the remainder is not copied. UKUDR protection historically extended even further, covering an “aspect of” a design part, but the CDPA was amended in 2014 to remove the “aspect” wording. 

The key design “part” in this case was the perimeter of the Mackdeck panel (highlighted above) [Merpel: An intriguing part of UKUDR is that the claimant can specify the part of the product said to be the design - see a vintage IPKat post here]. The Defendants argued that this was a disembodied “aspect” and should be excluded from protection under the updated wording of the CDPA. On review of the perimeter design, the judge concluded that it was a “clearly circumscribed section of the larger article” and was sufficiently identifiable to merit protection as a design part. Its “contiguous” (i.e. entirely connected) nature appeared to assist the judge in reaching this conclusion. 

Originality

The judge confirmed that originality was to be assessed in the copyright sense, which means (despite a valiant effort by the Claimant to argue otherwise) the EU test, being the author's own intellectual creation. In response to the Claimant's concern that using the higher EU test reduced the scope for protection of functional designs, the judge confirmed it would only prevent the most functional designs whose methods of implementation are so limited that the idea cannot be divorced from its expression. Many functional designs can include expression of free and creative choices such that the end result reflects the designer's personality (see Brompton Bicycle C-833/18).

That was indeed what the judge found here - the number, size, shape and spacing of the various holes throughout the Macdeck design indicated sufficient flexibility for the author to express creative freedom. He also applied that logic to the perimeter design, albeit noting that the opportunities for intellectual creation were more limited. Despite several similar products on the market, the judge further found that the scope for free choice in the above areas would prevent the resulting designs being viewed by a notional designer as trite or commonplace. 

Exceptions

Various exceptions to design protection were considered, including method of construction (designs with too high a level of generality) and surface decoration. The method of construction exception failed, but the Defendant succeeded in establishing that the Macdeck's central roundel, designed to contain a trade mark, was surface decoration and as such should be excluded from protection.

The most contentious exception was the "must-fit" or "interface" provision (drafted to ensure designers can't prevent others from making parts which fit their equipment). The judge took a judicious approach to applying this provision and stressed that for a part to be excluded, there must be precision in the interrelationship enabled (perhaps instructive to read "required") by the protected design. The Macdeck panels are designed to tesselate in a regular pattern, and although they are not strictly meant to be mixed with other panels, this was exactly the Defendant's aim (they had £1m of Macdeck panels already and wanted to combine them with their own, cheaper model). The Macdeck panels are also designed with holes to allow them to be (i) located around scaffolding poles (with the poles passing through the holes in the decking) (ii) carried and (iii) strapped together to form a stable flooring.

The judge concluded that the size of the hole which enabled stable interface with the scaffolding poles was excluded from protection. The shape of that hole, however, could form part of the protected design. By contrast, the sizes of the slim holes intended to enable carrying and strapping were flexible and did not promote a sufficiently "precise and stable relationship" with an external part as to exclude protection.

Infringement

The infringement analysis was made more interesting by the fact that the Defendant was expressly trying to create a product which was interoperable with the Macdeck system. Ideally, in the words of one Director "a complete copy". The Defendant quickly realised that its early designs were too visually similar to the Macdeck system and rearranged the slots on the board into an X shape to guide the eye away from “all the J-Mac features". 

The judge reminded himself that the substantiality assessment was (in contrast to copyright) to be carried out taking into account the whole design (including any features found to be commonplace but excluding any features in which design rights do not subsist further to the exceptions above). 

After maintaining their designs through the various subsistence hurdles, the judge found that only one of the Claimant's designs (the perimeter design) was actually infringed by the Defendant's products. The amends which the Defendant had made to the configuration of the full-board design (by introducing the “X” shape) were held to be sufficient to produce a different overall visual appearance. The judge noted that although this is a case where there was "extensive copying", the Defendant's attempts to create a design which fell the right side of the line were successful. 

Those amendments did not however extend to the perimeter of the design, which was unchanged and largely tracked the perimeter of the Macdeck board, hence infringed the Claimant’s UKUDR.

Final thoughts

The judge took a creative approach to interoperability, maintaining protection for the shape of the scaffolding holes within the Macdeck board by finding only the size of the void was excluded. Handy evidence that some innovative thinking can avoid a haircut to even the most modular designs. 

Still on the theme of interoperability, it is interesting to note the judge’s emphasis on flexibility within the design. Where the design aspect in question was flexible enough to allow the connection to be made in a number of ways, it was held not to fall within the “must-fit” carve-out. The key question seemed to be whether there was “precision” and “stable interaction” in the relationship between the design and the external part. 

The final – and most obvious – take home from this judgment is the role of design parts. It’s easy to overlook the importance of parts in an (understandable) desire to keep cases streamlined and to avoid inadvertently pleading design “aspects”. But the Claimant here squeezed victory from the jaws of defeat by being bold enough to plead the part of its design which was most obviously replicated, despite the risk of it being found to be an unprotectable design “aspect”. 

In a UKUDR world where copying is not conclusive and design freedom is king, practitioners would be well-advised to note the generous protection afforded to functional design parts in the judgment, and plead accordingly…"

Thank you Rebecca!