Fairfax & Favor v House of Bruar

Falls of Bruar

Author Yomangan Licence Public domain Source Wikimedia

Jane Lambert

Intellectual Property Enterprise Court (Miss Recorder Michaels) Fairfax & Favor Ltd and others v The House Of Bruar Ltd and others [2022] EWHC 689 (IPEC) (25 March 2022)

In Design,  I wrote:

"In everyday language, the word “design“ may refer to an article’s functions as in the design of a circuit, reactor or website or to its appearance as in the design of a dress, garden or piece of furniture. Obviously, the two are not mutually exclusive since the aerodynamic lines of a sports car or the span of a bridge can be things of beauty as well as feats of engineering. The law protects both functional and ornamental design."

I added that the shape or configuration (whether internal or external) of the whole or any part of an article is protected from copying by a new intellectual property right known as “design right” and that new designs having individual character can be registered with the Intellectual Property Office as “registered designs”.

A case that illustrates the difference between the two kinds of design protection is Miss Recorder Michaels's judgment in Fairfax & Favor Ltd and others v The House of Bruar Ltd and others [2022] EWHC 689 (IPEC) (25 March 2022). This was an action for the infringement of design rights in the design for a knee-length ladies’ boot and what is now UK registered design 90029542220001. The defendants challenged the subsistence of design rights and the validity of the registered design.  The action came on for trial before the learned recorder on 2 and 3 Dec 2021.  She handed down judgment on 25 March 2022.

The registered design had been a registered Community design when the claim form was issued.  After EU law ceased to apply to the UK at 23:00 on 31 Dec 2020 the second and third claimants who were the holders of the registered Community design became entitled to a registered design right in this country for the same design pursuant to art 54 (1) (b) of the Agreement on the withdrawal of the United Kingdom of Great Britain and Northern Ireland from the European Union and the European Atomic Energy Community. According to Ms Michaels:

"No application was made to amend the claim expressly to assert reliance upon the UK registered design, but no point was taken about this by the Defendants."

She added that it had not been necessary to distinguish between the RCD and the equivalent UK right,

  

The main features of the registered design are as follows:

 

The unregistered designs relied upon were:

"a. The whole of the Heeled Regina boot (essentially as shown in the RCD);
b.  The Heeled Regina boot with the back gusset area excluded:

c. The Heeled Regina boot with the back panel and part of the inner side of the boot excluded:"



the features of the unregistered design relied upon were:

• the mid-height heel,
• the height of the shaft,
• the narrowing of the boot just above the ankle,
• the narrow shape of the toe,
• the panelling of the gusset at the back of the boot,
• the sloping cuff at the top of the boot, and
• the decorative features - the fan and tassel. 

Another set of designs, known as "the Partial designs" had the same features except for the gusset design as the back of each of those designs was excluded.

The defendants, a massive retail outlet near Blair Athol with a mail order business and two of its directors, were accused of selling boots that infringed those designs.  They admitted copying another design known as the "Amira" but denied design right and registered design infringement. 

They challenged the subsistence of design right in the Heeled Regina and Partial designs on the grounds that they were "commonplace" within the meaning of s.213 (4) of the Copyright, Designs and Patents Act 1988.  The recorder referred to para [91] of Mr David Stone's judgment in Original Beauty Technology Co Ltd v G4K Fashion Ltd [2021] F.S.R. 20:

"[91]. In addition to being original, to qualify for UKUDR, a design must also not be “commonplace in a qualifying country in the design field in question at the time of its creation”. In Neptune [2018] F.S.R. 3 , Henry Carr J said (at [59] and [60]):

'[59]. In Ocular Sciences Ltd v Aspect Vision Care Ltd (No.2) [1997] RPC 289 Laddie J explained that the commonplace exclusion applies to ‘any design which is trite, trivial, common-or-garden, hackneyed or of the type which would excite no peculiar attention in those in the relevant art’. The analysis must be conducted by reference to material ‘shown to be current in the thinking of designers in the field at the time of creation of the designs’, per Jacob LJ in Lambretta Clothing Co Ltd v Teddy Smith (UK) Ltd [2004] EWCA Civ 886; [2005] RPC 6 at [56].
[60]. Following the amendment to s.213(2) , it is more difficult for the claimant to define the shape of a design at a higher level of abstraction than its physical manifestation in the relevant article. As explained by Arnold J in the Whitby case at [45], this makes it harder for the claimant to prove infringement, and also makes it harder for the defendant to prove that the design is commonplace. Nonetheless, the commonplace exclusion remains a useful crosscheck on the breadth of a claim to infringement—the more generalised the definition of the design relied upon, the more likely it is to encompass designs which would ‘excite no peculiar attention in those in the relevant art’.

92. I was also referred to the useful summary of the task facing a defendant set out by HHJ Hacon in Action Storage Systems Ltd v G-Force Europe.Com Ltd [2016] EWHC 3151 (IPEC); [2017] FSR 18 at [37]:

'(1) A defendant alleging that a design is commonplace should plead the significant features of the design as he contends them to be, the prior art relied on in which those features are said to be found and the date from which each cited item of prior art was available to designers in the relevant design field.
(2) Prior art which renders a design commonplace will not be obscure. The evidential burden rests on the defendant to show that it is not.
(3) A design will be commonplace if it is shown to have been current in the thinking of designers in the field in question at the time of creation of the design, see Lambretta [2005] RPC 6 at [56]. Another way of looking at this is that a commonplace design will be one which is trite, trivial, common-or-garden, hackneyed or of the type which would excite no particular attention in those in the relevant design field, see Ocular Sciences Ltd v Aspect Vision Care Ltd (No.2) [1997] RPC 289, at p.429, approved in Farmers Build Ltd (In Liquidation) v Carier Bulk Materials Handling Ltd [2000] ECDR 42; [1999] RPC 461, at pp.477 and 479. A third way of characterising a commonplace design is that it will be ready to hand, not matter that has to be hunted for and found at the last minute, see Ultraframe (UK) Ltd v Eurocell Building Plastics Ltd [2005] EWCA Civ 761; [2005] R.P.C. 36, at [60].
(4) The design field in question is that with which a notional designer of the article in issue is familiar, see Lambretta [2005] RPC 6 at [45].
(5) A design made up of features which individually are commonplace is not necessarily itself commonplace. A new combination of run-of-the-mill features may not be commonplace. See Ocular Sciences [1997] RPC 289 at p.429, approved by the Court of Appeal in Farmers Build [1999] RPC 461 at p.476 and in Ultraframe [2005] EWCA Civ 761 at [64].
(6) If the designer of the accused article has expended sufficient skill and labour to make his design original (in the copyright sense) over a single piece of commonplace prior art, he is liable also to have succeeded in creating a design that is not rendered commonplace by that prior art.'”

Ms Michaels referred to Lord Justice Mummery's remarks on the commonplace limitation in his judgment in Farmer Build Ltd v Carier Bulk Materials Handling Ltd and others [1999] ITCLR 297, [2000] ECDR 42, [1998] EWCA Civ 1900, [1999] RPC 461:

“The shorter life of the design right, the narrower scope of protection against copying and the prima facie protection given by it to designs of functional articles are indications that the reference to 'commonplace' designs in section 213 (4) should be interpreted narrowly rather than broadly. The fact is that very many designs of functional articles which fall within the definition of a 'design' are likely to be 'commonplace' if that term is construed broadly in the sense of 'well known'.”

She also referred to paras [51] and [52] of Lord Justice Park's judgment in A. Fulton Co Ltd v Grant Barnett & Co  [2000] EWCA Civ 513, [2001] RPC 16:

“[51]. … the denial of design right protection to commonplace designs does not mean that a design must be new to qualify for protection. A design which is new is fairly unlikely to be commonplace, but it is a mistake to conclude that, if a particular design has been used before and so is not new, therefore it is commonplace. It might be, but the conclusion does not necessarily follow. …
[52] A consequence of the point made in the previous paragraph is that a design should not be denied design right protection merely because the defendant, in researching what is often referred to as the “prior art”, discovers an obscure article which is fairly similar to the design in which design right is claimed. That would not be enough to make the claimant's design commonplace.”

After considering evidence of the development of those designs the learned recorder concluded at para [52] of her judgment that the subsistence of design right in the Partial designs had to be tested as at October 2014, and in the Heeled Regina design as at November 2014 (and prior to 27 November).  The defendants offered a number of boots in support of their contention that those designs were commonplace.  Applying the guidance set out above, Ms Michaels found that design right subsisted in the Heeled Regina design but not in the Partial designs.

Next, the defendants challenged the second claimant's title to the unregistered design rights on the basis that he was merely a customer seeking bespoke alterations to an existing design. In the recorder's view the second claimant's input to the creation of the Heeled Regina design was sufficient to make him the designer.  The craftsman who carried out the second claimant's instructions acknowledged that to be the case,  As the designer the second claimant was entitled to the design rights in the design that he had created.

The defendants denied copying,  They alleged that they had bought footwear that had been independently designed from a competitor to the claimants' supplier.  Ms Michales found no evidence that supported that claim and a good deal of evidence which contradicted it.  She concluded that the first defendant wished to sell boots which looked like the first claimant's and asked its supplier to copy the Heeled Regina design when making them  She had no hesitation in finding that the first defendant’s boots had been deliberately copied from the second claimant's designs.  

S.226 (1) (a) of the 1988 Act confers upon a design right owner the exclusive right to reproduce the design for commercial purposes by making articles to that design.   Subsection (2) adds:

"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, and references in this Part to making articles to a design shall be construed accordingly."

The recorder referred to para [53] of Mr Justice Park's judgment in Neptune (Europe) Ltd v Devol Kitchens Ltd [2017] EWHC 2172 [2018] F.S.R. 3:

“In contrast to copyright, it is not an infringement of a UK unregistered design to reproduce ‘a substantial part’ of a design. The importance of this distinction may be illustrated by the facts of the present case. Apart from the features which Neptune has excluded, it relies upon the entirety of each of the articles of furniture which is said to embody the designs in issue, and does not rely upon parts or combinations of parts of such articles. Therefore, it is necessary to consider the differences as well as the similarities between Chichester and Shaker products. It will not be enough to show that a particular feature or combination of features (which in a copyright claim might constitute a substantial part) has been copied. Nor will it be enough to show that Neptune’s key features have been copied, since those features, whether alone or in combination, have not been pleaded as a design right.”

Ms Michaels found two of the products sold by the first defendant were made substantially or very substantially to the second claimant's designs,  It followed that those products infringed the second claimant's design rights.  There were sufficient differences between the third of the first defendant's products and the heeled Regina design to avoid infringement. 

The defendants challenged the validity of the registered design.  Referring to para [181] of Judge Hacon's judgment in Cantel Medical (UK) Limited v ARC Medical Design Limited [2018] EWHC 345 (Pat) Miss Recorder Michaels directed herself as follows at [84]:

"First, the design sector. It was common ground that this was to be tested in light of the field of ladies’ boots. Second is the identity of the informed user and the degree of their awareness of the prior art. Again, it was common ground that this was a buyer and/or wearer of such boots. Whilst Mr St Quintin suggested that such an informed user might include a retailer, he was happy to accept that the level of attention which would be paid to the goods would be that of a consumer. Thirdly, I must assess the designer's degree of freedom in developing his design, focusing upon elements in respect of which the designer had more design freedom. And lastly, I must compare the RCD with the earlier designs relied upon."

Having carried out that exercise, Ms Michaels concluded that the registrations were valid.  She also found that the products that had infringed the design rights did not produce on an informed user a different overall impression from the registered designs.  It followed that the second and third claimants' registered design had also been infringed;. 

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