Unregistered Design Right - KF Global Brands Ltd v Lead Wear Ltd

Jane Lambert

Intellectual Property Enterprise Court (Mr Recorder Campbell KC) KF Global Brands Ltd v Lead Wear Ltd and others  [2023] EWHC 1303 (IPEC) (2 June 2023)

This was an action for unregistered design right infringement.  The claimant, KF Global Brands Ltd ("KF"), claimed design right in the design of BKS-001 cargo trousers.  A pair of those trousers appears above.  The document below was alleged to record the design.

KF alleged that a Bangladeshi company called S&S Swimwear made copies of those trousers (a sample of which appears below) in Bangladesh:

 

It complained that S&S sold those trousers to Lead Ware Ltd (the first defendant) and Mr Kamml Hassan (the second defendant) for resale in the UK.  The defendants denied that design right subsisted in the design of the BKS-001 trousers on the ground that the BKS-001 design had been copied from the design of the following garment known as "the Aldi trousers."

They also denied that the manufacture of S&S's trousers in Bangladesh and their importation and sale in the UK would have infringed design right in the BKS0001 design had such design right subsisted.

The Issues

At a case management conference that took place on 21 Oct 2022 His Honour Judge Hacon directed 8 issues to be tried,   Several were resolved before trial.   Those that remained were as follows:

"1) Subsistence. At the time of its alleged creation, was the Claimant’s design original?
2) Primary infringement, within s 226 of the Copyright, Designs and Patents Act 1988 (“the Act”).
3) Secondary infringement, within s 227 of the Act.
4) If liability is established, should additional damages be awarded pursuant to s 229 (3) of the Act?"

The Trial

The action came on for trial before Mr Recorder Campbell KC from 20 to 21 April 2023.  He heard evidence from KF's director, Mr Balal Ahmad Khan,  on behalf of the claimant, the third defendant Mr Mohammed Abdul Kader on his own behalf and on behalf of the first defendant and the second defendant, Mr Kamrul Hassan.  The learned recorder handed down judgment on 2 June 2023, By para [53] of his judgment in KF Global Brands Ltd v Lead Wear Ltd and others  [2023] EWHC 1303 he dismissed the claim.

Issue 1: Subsistence. At the time of its alleged creation, was the Claimant’s design original?

According to s.213 (1) of the Copyright, Designs and Patents Act 1988 unregistered design right subsists only in original designs. Mr Justice Arnold explained at para [43] of his judgment in  Whitby Specialist Vehicles Ltd v Yorkshire Specialist Vehicles and Others  [2014] EWHC 4242 (Pat), [2016] FSR 5 that original for the purposes of s.213 (1) means a design originating with the designer rather than a design that has been copied from an antecedent design.

Mr Khan claimed to have designed the BKS-001 trousers and given the designs to one Naseem Ali of the Pakistani company, Ali Textiles.  The recorder did not believe him.  He found at para [23] of his judgment that Mr Khan gave a pair of Aldi trousers to Mr Ali who was visiting England at the time.   Mr Ali then took them back to his factory in Pakistan and produced the BKS-001 trousers which differed from the Aldi trousers only in minor details  As the BKS-001 design was essentially a copy of the Aldi trousers, Mr  Campbell held that the BKS-001design lacked originality.   As the design was not original design right could not subsist in it.

Issue 2 - Primary infringement, within s 226 of the Copyright, Designs and Patents Act 1988

The recorder's finding that design right did not subsist in the BKS-001 design disposed of the action but Mr Campbell considered whether such design right would have been infringed had it subsisted in case his finding on subsistence was wrong.  

S,226 (1) of the 1988 Act confers on a design right owner 

"the exclusive right to reproduce the design for commercial purposes
(a) by making articles to that design, or

(b) by making a design document recording the design for the purpose of enabling such articles to be made." 

That 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."

The problem for KF was that none of the defendants did any of the acts mentioned in s.226 (1).  The garments were made by S&S Swimwear in Bangladesh.  The claimant did manage to prove that Lead Wear Ltd had copied from a pre-existing listing page of one of the claimant's licensees but the recorder found that that was irrelevant.  He held at [41] that none of the defendants' products would have infringed design right in the BKS-001 design had it subsisted.

Issue 3 - Secondary infringement, within s 227 of the Act

S.227 (1) provides:

"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."

S.228 (2) provides that an article is an infringing article if its making to that design was an infringement of design right in the design.   S.228 (3) adds that 

"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 or a breach of an exclusive licence agreement relating to the design."

Mr Recorder Campbell held that none of S&S's trousers was an infringing article.  He did not explain why but it may be surmised that that was because the trousers had not been copied from an original design. 

Had design right subsisted in the BHS-001 design he would have held that the first and third defendants knew or had reason to believe that the S&S trousers were infringing articles given their close involvement in their importation. 

The position of the second defendant was different.  Even if they had been infringing articles the recorder would have held that the second defendant did not have reason to believe that S&S's trousers were isuch before he received the letter before claim.   By that time, the second defendant had ceased to sell those trousers.

Accordingly the claim under s,227 also failed.

Issue 4 - If liability is established, should additional damages be awarded pursuant to s 229 (3) of the Act?"

As liability was not established this issue did not arise.

Discussion

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