Registered Designs - ASR Interiors Ltd v AWS Trading Ltd.

 

Jane Lambert

Intellectual Property Enterprise Court (Mr Recorder Campbsell QC) ASR Interiors Ltd v AWS Trading Ltd  [2022] EWHC 372 (IPEC) (24 Feb 2022)

This was an action for the infringement of the following registered designs and a counterclaim for declarations that those registrations were invalid:

• Design number 6050903 for a Crushed Diamond Mirrored Sideboard;
• Design number 6050906 for Articles of adornment; and 
• Design number 6051281 for a Dining Chair.

The action and counterclaim came on before Mr Recorder Campbell  QC on 13 Jan 2022.  in para [80] of his judgment in ASR Interiors Ltd v AWS Trading Ltd, [2022] EWHC 372 which he delivered on 24 Feb 2022, the learned recorder found for the claimant on the claim and dismissed the counterclaim.

The Claim

The claimant was the proprietor of the above-mentioned design registrations.  It alleged that the defendant had infringed those registrations by marketing and distributing the following products:

The Defence

The defendant denied infringement and alleged that the above products pre-dated the design registrations.  The claimant accused the defendant of falsifying its evidence so as to make it appear that those products had been made available before the registrations.  The issue in respect of each of the registered designs was whether the defendant's product produced a different overall impression from the registered design and whether the sale of the allegedly infringing product anticipated the registration.

The Law

The recorder referred to his decision in Erol v Posh Fashion [2022] EWHC 195 (IPEC) which I discussed in Registered Designs - Erol v Posh Fashion Ltd. on 6 June 2022.  He quoted s.1B of the Registered Designs Act 1949 and cited Judge Hacon's judgment in Cantel Medical (UK) Ltd v ARC Medical Design [2018] EWHC 345 (Pat) which is discussed in more detail in Erol.  He directed himself that:

"[31] The overall impression produced on the informed user is central not only to validity (as above) but to infringement, which is governed by section 7 of the Act as follows:

7 Right given by registration.
(1)The registration of a design under this Act gives the registered proprietor the exclusive right to use the design and any design which does not produce on the informed user a different overall impression…

[32] The informed user has the characteristics identified by HHJ Birss QC in Samsung Electronics (UK) Ltd v Apple Inc [2012] EWHC 1882, approved by the Court of Appeal in Magmatic Ltd v PMS International Ltd [2014] EWCA Civ 181."

Fabrication of Evidence

The question of whether or not the defendant had fabricated evidence concerned a sales order for a product that was no longer alleged to infringe.   Mr Campbell found that the same order had been fabricated.  That meant that he could not rely on the evidence of the defendant's director unless it was corroborated.

Conclusion

The learned recorder found in the case of each design that the allegedly infringing product did not produce a different overall impression from the registered design and that none of those products had been made available to the public before the designs were registered.

Further Information

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