Registered Designs - Barber v Wakefield

Representation of the Registered Design

Crown Copyright  Open Government Licence

 

Jane Lambert

Intellectual Property Enterprise Court (HH Judge Hacon) Barber v Wakefield and others [2024] EWHC 3058 (IPEC) (28 Nov 2024)

This was a claim for the infringement of UK registered design number 4028780 for a locksmith's letterbox tool handle.  A representation of the design appears above,  His Honour Judge Hacon who tried the action said that it was the design of a tool to be manipulated through the letterbox of a front door to open the door without a key.  Typically the tool is used to assist individuals who are locked out of their homes though, as the judge remarked at para [21] of his judgment in Barber v Wakefield and others [2024] EWHC 3058 (IPEC) (28 Nov 2024), other uses could be imagined.

Alleged Infringement

The proprietor of the registered design alleged that Ultimate Tools Ltd and the individuals who ran that company had infringed his registered design by making a prototype to that design. They publicized the prototype in media posts and in at least one trade fair but no product made from the prototype was ever sold. Only one left their possession and that was provided to a master locksmith called Julian Alder for testing.

Procedural History

The proprietor brought various proceedings including a claim for registered design infringement against that company and those individuals in the IPEC small claims track.  As claims under the Registered Designs Act 1949 fall outside the jurisdiction of the small claims track because of CPR 63.27 (1) (a) District Judge Hart transferred the case to the multitrack.  At a case management conference before Judge Hacon on 11 July 2024, the learned judge ordered the following issues to be tried:

"(1) Whether the Registered Design was new as of 19 February 2013, the date of registration.
(2) Whether the Registered Design has individual character.
(3) Whether any features of the Registered Design are features of appearance of a product solely dictated by the product's technical function.
(4) Having in mind the answer to issue (3) above, whether the design of the Second Defendant's tool complained of in the Particulars of Claim, defined as "the Accused Design", produces on the informed user a different overall impression to that produced by the Registered Design.
(5) Whether the Second Defendant has used the Accused Design, which shall be taken to mean whether the Second Defendant has either (a) made, offered, put on the market, imported, exported or used a product to which the Accused Design is incorporated or (b) stocked such a product for those purposes.
(6) If the Second Defendant is found liable for infringement of the Registered Design, whether the First and/or Third Defendants are jointly liable with the Second Defendant for the use of the Accused Design."

The first and second issues fell away because the parties agreed that the registered design was new and had individual character on 19 Feb 2013.

The Law

After referring to paras [181] and [182] of his judgment in Cantel Medical (UK) Limited v ARC Medical Design Limited [2018] EWHC 345 (Pat) and para [19] of his judgment in Marks and Spencer plc v Aldi Stores Ltd [2023] EWHC 178 (IPEC), Judge Hacon directed himself as follows:

"The court must:
(1) Decide the sector to which the products in which the designs are intended to be incorporated or to which they are intended to be applied belong;
(2) Identify the informed user and having done so decide (a) the degree of the informed user's awareness of the prior art and (b) the level of attention paid by the informed user in the comparison, direct if possible, of the designs;
(3) Decide the designer's degree of freedom in developing his design;
(4) Assess the outcome of the comparison between the RCD and the contested design, taking into account
(a) the sector in question,
(b) the designer's degree of freedom,
(c) the overall impressions produced by the designs on the informed user, who will have in mind any earlier design which has been made available to the public,
(d) that features of the designs which are solely dictated by technical function are to be ignored in the comparison.
(e) that the informed user may in some cases discriminate between elements of the respective designs, attaching different degrees of importance to similarities or differences; this can depend on the practical significance of the relevant part of the product, the extent to which it would be seen in use, or on other matters."

The Informed User

The parties agreed that a letterbox tool is characteristically used by locksmiths, security agents and sometimes by the police.

Design Corpus

They also agreed that the only letterbox tools on the market on 19 Feb 2013 were the Souber and Pink letterbox tools.

Features Dictated Solely by Technical Function

It was common ground that a letterbox tool should be U-shaped to fit through the letterbox and avoid any security hood but the judge concluded that a letterbox tool designer has significant room for variation once the U-shape has been incorporated.

Impression on the Informed User

The learned judge considered the overall impressions created by the registered design and by the prototype. Both had a substantially U-shaped section. The longer first side of the U shape ended at the termination of one end of the core. The shorter second side of the U shape was continued by the design extending at an obtuse angle away from the first side and then extending at an obtuse angle in the opposite direction before coming to an end. His conclusion was that, particularly when compared to the design corpus, the prototype did not create a different overall impression on the informed user to that created by the registered design.

Infringement

That did not mean that the prototype infringed the registered design.  Judge Hacon considered s.7 (1) (2) and s.7A (1) and (2) of the Registered Designs Act 1949.  The making and use of the prototype was an infringement subject s.7A.  His Honour said at para [50]:

"The acts in issue are making and using the Prototypes and (arguably) offering one of them to Mr Alder. It would make little sense to say that the Prototypes were made publicly. As to offering, I have no reason to think that anyone other than Steven and Simon Wakefield and Mr Alder was aware of the act of supply. Likewise, the use made of the Prototypes by the defendants does not seem to have been made public. Accordingly, I find that, pursuant to s.7A(2)(a), the making and use of the Prototypes and their supply to Mr Alder were not acts of infringement."

He concluded that there had been no infringement,

Injunction

The absence of an infringement in the past did not exclude a threat to infringe in the future,   Judge Hacon explained at [56]:

"The effect of my findings is that if the defendants were to market commercially letter box tools of the shape the same as or sufficiently similar to that of the Prototype, they would infringe the Registered Design. I asked Mr Wakefield what his and the company's plans were regarding the Prototype. He said that time has gone by and his attention has move on to other projects, but if the court were to find that he was free to market letter box tools like the Prototype, he would consider taking it forward."

In the judge's view that intention justified a quia time injunction:

"Given what Mr Wakefield told me, there is a threat ...... I therefore think that an injunction should be granted. The defendants would be wise to ensure that any letterbox tool they market in the future looks conspicuously different from the Registered Design. This only applies until the Registered Design expires."

No other relief was granted,   As His Honour stated at [58]:

"Nothing has been done which would warrant an inquiry as to damages or an account of profits. As to costs, neither side was legally represented, honours in the case are about even, so I will make no order as to costs."

Must Fit Exception

The defendants raised a defence based on s.1 C (2) of the Act after the case management conference,   Judge Hacon would not have allowed the issue to be raised had the parties been legally represented but he considered the point as both sides were unrepresented.   He held at [20] that "while a letterbox tool must fit through the letter box and be suitable for close contact with objects on the inside of the door, there is little else in the way of a fit required."  Accordingly, the must-fit exclusion did not apply.

Comment

The most interesting aspect of this case is the award of an injunction to restrain future infringement in the absence of evidence of past tortfeasance,  The decision feels anomalous but it is hard to fault it,   Anyone wishing to discuss this case should call me on 020 7404 5252 during office hours or send me a message through my contact form at all other times.