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You are here: BAILII >> Databases >> England and Wales Court of Appeal (Civil Division) Decisions >> A Fulton Company Ltd. v Grant Barnett & Company Ltd. [2000] EWCA Civ 513 (05 October 2000) URL: http://www.bailii.org/ew/cases/EWCA/Civ/2000/513.html Cite as: [2000] EWCA Civ 513, [2001] RPC 16 |
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CHANCERY DIVISION
B e f o r e :
____________________
A. FULTON COMPANY LIMITED | ||
(Claimant) | ||
-v- | ||
GRANT BARNETT & COMPANY LIMITED | ||
(Defendant) |
____________________
Dr Heather Lawrence instructed for the Defendants by Laytons of EC4Y 2LS
____________________
Crown Copyright ©
Act, the | The Copyright, Designs and Patents Act 1988 |
Everwise | Taiwanese company, maker of moulds for umbrella handles, supplier of Fulton |
Flat Compact | An umbrella marketed by Fulton |
Fulton | A. Fulton Company Ltd, the claimant in the case. |
Fulton, Mr | Arnold Fulton, the founder, Chairman and Chief Executive of Fulton |
Grant Barnett | Grant Barnett & Company Ltd, the defendant in the case |
Hewitt, Mr | Peter Hewitt, a director of Grant Barnett |
Ming San | Chinese company, major supplier of umbrellas to Grant Barnett |
Miniflat | An umbrella marketed by Fulton |
Miniflat case | The case for holding the Miniflat and the Flat Compact |
Szu Mao | Chinese company, major supplier of umbrellas to Fulton |
Thomas, Mr | David Brian Thomas, the Managing Director of Grant Barnett |
6F Ultra Compact | An umbrella marketed by Grant Barnett |
Statutory references are to sections of the Act. In this judgment I refer sometimes to 'design right' and at other times to 'unregistered design right'. These are the same thing. The statutory term under section 213 of the Act is 'design right', but 'unregistered design right' is sometimes used in order to distinguish it from the protection accorded to registered designs under the Registered Designs Act 1949.
Overview
The umbrellas, the handles and the cases
The main facts
'When I design new umbrellas, handles or cases I do so by making a series of rough sketches, considering prototypes and giving oral and written instructions, via Patricia Huang, to Szu Mao and Everwise in the Far East.'
I decided that the umbrella case needed to be of clearly rectangular cross section to emphasise the 'flatness' of the umbrella. The cases on the 'Stowaway No.1' and 'No.3' did not really achieve this and so I came up with a new case design for the Miniflat.
I will call the case which Mr Fulton designed in this way 'the Miniflat case'. It should be noted, however, that it was used for the Flat Compact as well as for the Miniflat. The two umbrellas had different handles but the same cases. (For completeness I should qualify what I have said to this extent. The case for the Flat Compact was made of a slightly more expensive material than the case for the Miniflat. However, that is irrelevant for the purposes of this action, since the design of the case was the same for each umbrella.)
The law
213. Design right
(1) Design right is a property right which subsists in accordance with this Part in an original design.
(2) In this Part "design" means the design of any aspect of the shape or configuration (whether internal or external) of the whole or part of an article.
(3) Design right does not subsist in-
(a) a method or principle of construction,
(b) 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.
(4) A design is not "original" for the purposes of this Part if it is commonplace in the design field in question at the time of its creation.
(5) ...
(6) Design right does not subsist unless and until the design has been recorded in a design document or an article has been made to the design.
(7) ...
... the 'designer', in relation to a design, means the person who creates it.
Where... a design is created by an employee in the course of his employment, his employer is the first owner of any design right in the design.
In an action for infringement of design right all such relief by way of damages, injunctions, accounts or otherwise is available to the plaintiff as is available in respect of the infringement of any other property right.
There are some restrictions on this, and in the present case I ought to quote subsections (2) and (3) of section 233, which is headed 'Innocent infringement'.
(2) Where in an action for infringement of design right brought by virtue of section 227 (secondary infringement) a defendant shows that the infringing article was innocently acquired by him or a predecessor in title of his, the only remedy available against him in respect of the infringement is damages not exceeding a reasonable royalty in respect of the act complained of.
(3) In subsection (2) "innocently acquired" means that the person acquiring the article did not know and had no reason to believe that it was an infringing article.
Shape or configuration of articles and parts of articles; aspects of shape and configuration; the significance of the particulars of claim
This means that the proprietor can trim his design right claim to most closely match what he believes the defendant to have taken. The defendant will not know in what the alleged monopoly resides until the letter before action, or more usually, the service of the statement of claim. This means that a plaintiff's pleading has particular importance. It not only puts forward the claim but is likely to be the only statement of what is asserted to be the design right.
At an earlier stage of the present case there was an interim application as a result of which Pumfrey J directed Fulton to amend its pleadings so as to identify with precision which aspects of which articles were contended by it to carry the design rights alleged to have been infringed by Grant Barnett.
Created designs; originality
Commonplace
An important point here is that it does not disqualify the Sienna from design right if Premier [the defendant], having scoured the trade magazines, manages to come up with one or two fairly obscure items which may be said to have a close similarity.
I am also very conscious of the risk that a judge, without design expertise, may underestimate the value or significance of quite small variants within a family of designs. In certain contexts, what may be in quantitative terms a very small shift to a line or an angle or an arc may make the difference between a design working or not working, whether the purpose of the design is functional or aesthetic. In such a case, a 'right' design might not be commonplace because it would have something sufficiently valuable and distinctive about it when compared with the other superficially similar designs already current.
Mr Underhill did not of course have umbrella handles in mind, but what he said seems to me to be very apt in the present context. The only gloss which I would venture to add is that, in my view, for a design not to be commonplace even though it differs from earlier designs in the same field only by small shifts in (for example) lines, angles and arcs, the court does not have to form a view about whether the resulting design 'works' or not. If the designer sets out to create a new and different design I consider that his design may well not be commonplace even if it proves to be a failure in the sense that the purchasing public appears not to like it.
Method or principle of construction
The interface (or 'must fit') exclusion
(3) Design right does not subsist in - (b) features of shape or configuration or 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...
Dr Lawrence submits that this provision prevents design right subsisting in the Miniflat case. I do not agree.
The 'must match' exclusion
Design right does not subsist in - (b) features of shape or configuration of an article which - (ii) are dependent upon the appearance of another article of which the article is intended by the designer to be an integral part.
Dr Lawrence, if I understand her correctly, submits that this exclusion prevents Fulton from asserting design right in the Flat Compact handle. A paragraph in her closing written submissions, under the heading Must-Fit/Must-Match, says this:
Where you have a flat rectangular umbrella in a case, and you wish to put a handle on the umbrella, Mr Thomas's evidence is that you are constrained to choose a flat rectangular handle of cuboid shape.
Surface decoration
Conclusion on subsistence of design right
Ownership of design right
Infringement
226 Primary infringement of design right
(1) the owner of design right in a design has the exclusive right to reproduce the design for commercial purposes -
(a) by making articles to that design...
(2) Reproduction of a design by making articles to the design means copying the design so as to produce articles exactly or substantially to that design...
(3) Design right is infringed by a person who without the licence of the design right owner does, or authorises another to do, anything which by virtue of this section is the exclusive right of the design right owner.
(4) For the purposes of this section reproduction may be direct or indirect...
(5) ...
227 Secondary infringement: importing or dealing with the infringing article
(1) Design right is infringed by a person who, without the licence of the design right owner -
(a) imports into the United Kingdom for commercial purposes, or
(b) has in his possession for commercial purposes, or
(c) sells, lets for hire, or offers or exposes for sale or hire, in the course of a business,
an article which is, and which he knows or has reason to believe is, an infringing article.
(2) ...
228 Meaning of 'infringing article'
(1) in this Part 'infringing article', in relation to a design, shall be construed according to this section.
(2) An article is an infringing article if its making to that design was an infringement of design right in the design.
(3) An article is also an infringing article if -
(a) it has been or is proposed to be imported into the United Kingdom, and
(b) its making to that design in the United Kingdom would have been an infringement of design right in the design...
(4)(5 )(6) ...
Made substantially to the designs?
Copying?
Knowledge that the items were infringing articles?
Reason to believe that the items were infringing articles?
Nevertheless, it seems to me that 'reason to believe' must involve the concept of knowledge of facts from which a reasonable man would arrive at the relevant belief. Facts from which a reasonable man might suspect the relevant conclusion cannot be enough. Moreover, as it seems to me, the phrase does connote the allowance of a period of time to enable the reasonable man to evaluate those facts so as to convert the facts into a reasonable belief.
Remedies
Note 1 The word in the report is ‘unconnected’, but this is plainly a slip for ‘connected’. [Back]