CLARIFICATION OF THE DEFINITION OF “DESIGN” FOR THE PURPOSE OF UNREGISTERED DESIGN RIGHT UNDER THE CDPA 1988 (Neptune (Europe) Ltd v Devol Kitchens Ltd [2017] EWHC 2172)

This post has been contributed by Professor Jonathan Griffiths, Module Convenor for Intellectual property.

CopyrightChapter 9 of the Intellectual Property module guide covers the legal protection available for designs. In section 9.5, the relatively short-lived protection available under the Copyright Designs & Patents Act 1988 (“design right”) is outlined. In that section, it is explained that the key to understanding this right lies in an appreciation of the definition of “design” in this context (see CDPA 1988, s 213).

Amendment of the definition of “design” under the Intellectual Property Act 2014

As section 9.5 reveals, this definition has changed recently as a result of an amendment made under the Intellectual Property Act 2014. This amendment removed the italicised words below from the definition as it stood:

“…‘design’ means the design of any aspect of the shape or configuration (whether internal or external) of the whole or part of an article…”.

The rationale for removing “any aspect of” was set out in the Explanatory Notes to the 2014 Act:

“Subsection (1) limits the protection for trivial features of designs, by making sure that protection does not extend to ‘any aspect’ of the shape or configuration of the whole or part of an article. It is expected that this will reduce the tendency to overstate the breadth of unregistered design right and the uncertainty this creates, particularly in relation to actions before courts.”     (para [10])

However, despite this, the precise effect of the change remained surprisingly uncertain. In DKH Retail Ltd v H Young (Operations) Ltd [2015] FSR 21 (IPEC), HHJ Hacon stated that the changed definition:

“…no longer permits a claim to unregistered design right to extend to designs other than those specifically embodied in all or part of the claimant’s article, i.e. no more UK unregistered design rights in abstract designs….” (para [16]).

For a pre-amendment case in which such an “abstract” design was accepted, see CliniSupplies Ltd v Park [2012] EWHC 3452 (Ch) (see claim described at [59]).

Clarification of the consequences of the amendment

In a recent case in the Chancery Division of the High Court, HHJ Hacon’s suggestion outlined above has received some support. In Neptune (Europe) Ltd v Devol Kitchens Ltd [2017] EWHC 2172 (“Neptune (Europe)”), a case concerning kitchen furniture, Carr J attempted to answer:

“…the subtle question of the difference between ” parts ” and ” aspects ” of a design. In my view, aspects of a design include disembodied features which are merely recognisable or discernible, whereas parts of a design are concrete parts, which can be identified as such. Returning to the example of Laddie J in Ocular Sciences, aspects of the design of a teapot could include the combination of the end portion of the spout and the top portion of the lid, which are disembodied from each other and from the spout and lid. They are not parts of the design.” [44]

This extract provides a very useful example and suggests that, while claims can still be made to “parts” of an article, those “parts” must have a “concrete” quality. If this is right, claims to “disembodied” combinations of different “parts” of an article (as seen in CliniSupplies Ltd v Park [2012] EWHC 3452 (Ch), noted above) will no longer be permitted.

An interesting further question raised by the amendment under the 2014 Act was also considered in Neptune (Europe).

Is the change retrospective?

If the change introduced under the 2014 Act were fully retrospective, claims premised on an “abstract” design (such as those discussed above) would no longer be possible at all after 1st October 2014 (the date on which this part of the Act came into force). That is, a claim could not be brought for an infringement of design right (1) where the design was first recorded or made before 1st October 2014 and infringed before that date or (2) where a design was first recorded or made before 1st October 2014, even though it was infringed after that date.

In Neptune (Europe), Carr J concluded that the legislation was only retroactive in part. Causes of action based on the broader definition of “design” which had accrued prior to the coming into force of the 2014 Act were not disturbed by the change. That is, claims for infringement of “abstract” designs taking place prior to 1st October 2014, could still be brought after that date. If Parliament had intended to take away an accrued cause of action, it would have had to have employ very clear language to this effect. That was not the case in this instance. However, post-October 1st 2014 infringement claims could not rely on the broader “abstract” definition of a design. If such claims were allowed to persist, even in cases in which a design had been recorded or made before that date, the statute’s intended effect in this area would not fully be achieved for many years (an outcome which could not have been Parliament’s intention).

 

Leave a Reply

Fill in your details below or click an icon to log in:

WordPress.com Logo

You are commenting using your WordPress.com account. Log Out /  Change )

Google+ photo

You are commenting using your Google+ account. Log Out /  Change )

Twitter picture

You are commenting using your Twitter account. Log Out /  Change )

Facebook photo

You are commenting using your Facebook account. Log Out /  Change )

w

Connecting to %s