DKH Retail Ltd v H. Young (Operations) Ltd [2014] EWHC 4034 (IPEC)

Case No CC13P04277

[2014] EWHC 4034 (IPEC)

IN THE HIGH COURT OF JUSTICE

CHANCERY DIVISION

INTELLECTUAL PROPERTY ENTERPRISE COURT

Venue Royal Courts of Justice, Rolls Building, Fetter Lane, London, EC4A 1NL

Date 08/12/2014

Before

HIS HONOUR JUDGE HACON

Between

DKH RETAIL LIMITEDClaimant

H. YOUNG (OPERATIONS) LIMITEDDefendant

Iona Berkeley (instructed by Fox Williams LLP) for Claimant

Jacqueline Reid (instructed by Nabarro LLP) for Defendant

Hearing Hearing dates: 6-7 October 2014

Judgment

Judge Hacon :

Introduction

[1]This is a claim which concerns the designs of two overlapping parts of a gilet. The claimant (“DKH”) claims UK unregistered design right and unregistered Community design in relation to(1) the front central portion and hood of its ‘Academy’ gilet sold under the SUPERDRY brand name and

(2) the hood alone. DKH alleges that the defendant (“H Young”) has infringed those rights by the importation and sale of its ‘Glaisdale’ gilet sold under the ANIMAL brand name.

[2]Ms Berkeley appeared on behalf of DKH and Ms. Reid on behalf of H Young.

The designs in issue

[3]The parts of the Academy gilet relied on were the same for both the UK and Community rights. Those parts were specified in paragraphs4.1 and

4.2 of the Re-Amended Particulars of Claim. The first, part of the front of the gilet plus hood, was identified as follows:

“4.1 the front closing and hood and collar arrangement in combination being: (a) a double layer closing arrangement that has a central zip with flap underneath, both of which run the full length of the gilet including its collar, the top of the underlying flap folded over the zip, the flap being an approximate rectangular strip in shape with rounded corners; (b) an overlaying placket on the left side which runs the full length of the gilet including its collar; the placket being an approximate rectangular strip in shape; (c) A hood and collar arrangement which consists of: (i) a hood which is zipped onto the body of the gilet at the bottom of the collar of the gilet. The zip fastening for the hood is found at the bottom or base edge of the inside of the collar so that the collar of the gilet is a flap which sits externally to the base of the hood. The collar of the gilet being an approximate rectangular strip in shape which is fastened by the front closing central zip as referred to in (a) above; (ii) with an inner flap covering the zip fastening that connects the hood and the body of the gilet which is an approximate rectangular strip in shape with squared corners; and (iii) the hood having heavy wide drawstrings which are approximate rectangular shaped flat strips with straight/flat squared off ends, originating from the outer rim of the hood.”

The second part was just the hood:

“4.2 the shape and configuration of the hood and collar arrangement in combination as specified at 4.1(c) above.” (a) a double layer closing arrangement that has a central zip with flap underneath, both of which run the full length of the gilet including its collar, the top of the underlying flap folded over the zip, the flap being an approximate rectangular strip in shape with rounded corners; (b) an overlaying placket on the left side which runs the full length of the gilet including its collar; the placket being an approximate rectangular strip in shape; (c) A hood and collar arrangement which consists of: (i) a hood which is zipped onto the body of the gilet at the bottom of the collar of the gilet. The zip fastening for the hood is found at the bottom or base edge of the inside of the collar so that the collar of the gilet is a flap which sits externally to the base of the hood. The collar of the gilet being an approximate rectangular strip in shape which is fastened by the front closing central zip as referred to in (a) above; (ii) with an inner flap covering the zip fastening that connects the hood and the body of the gilet which is an approximate rectangular strip in shape with squared corners; and (iii) the hood having heavy wide drawstrings which are approximate rectangular shaped flat strips with straight/flat squared off ends, originating from the outer rim of the hood.” “4.2 the shape and configuration of the hood and collar arrangement in combination as specified at 4.1(c) above.”

[4]I will use the term “First Design” to mean the design of the part of the Academy gilet identified in paragraph 4.1 of the Re-Amended Particulars of Claim and “Second Design” to mean the design of the hood, identified in paragraph 4.2.

The issues

[5]Appended to the order in the case management conference dated 19 November 2013 before Norris J is, in the usual way, a list of issues. H Young raises a number of points on subsistence, ownership and infringement in relation to DKH’s claims. I will consider them in turn. UK unregistered design rights Whether DKH relied on ‘designs’ and the Intellectual Property Act 2014

UK unregistered design rights

[6]A ‘design’ in relation to which a party may claim UK unregistered design right is defined in s.213 of the Copyright, Designs and Patents Act 1988 (“the 1988 Act”):

“(1) Design right is a property right which subsists in accordance with this Part in an original design. (2) In this Part “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 words in brackets have been deleted by s.1(1) of the Intellectual Property Act 2014 (“the 2014 Act”), to which I will shortly return.

[7]H Young alleged that DKH has not claimed designs within the meaning of s.213(2) of the 1988 Act because all it relied on in both cases was a disparate selection of elements. There has long been an issue with regard to claims to UK unregistered design rights concerning the precise scope of the right which may be claimed. In the present case, as is usual, DKH set out the features of the designs relied on in paragraph 4 of the Re-Amended Particulars of Claim, which I have quoted above. There are two ways in which a list of that type can potentially be interpreted. According to the first, the design claimed is defined by and limited to the shape of the article, or part article, in question. The pleaded list of features does nothing more than to draw attention to the most relevant features of the article or part article on which the claimant relies for the purpose of resolving the dispute. The scope of the claimant’s exclusive right is thus restricted to reproduction of articles made exactly or substantially to that specific design (see s.226 of the 1988 Act).

[8]However if the claimant defines his design as that of the ‘configuration’ of the whole or part of an article, the ‘design’ claimed is liable to be a bundle of designs, that is to say all designs which have the pleaded list of features provided that those features are sufficiently interconnected. Thus the bundle of designs claimed includes those not embodied in all or in any part of the claimant’s article but which have all the relevant features. These others exist only in the abstract. The scope of the claimant’s exclusive right therefore extends to the reproduction of articles made exactly or substantially to any of the designs within the bundle, including the abstract ones, see Magmatic Ltd v PMS International Ltd

[2013] EWHC 1925 (Pat)

;

[2014] RPC 23

, at [82] and [90]-[93] (in which Arnold J felt himself bound by what Pumfrey J had said in Mackie Designs Inc v Behringer Specialised Studio Equipment (UK) Ltd

[1999] RPC 717

) and Clinisupplies Ltd v Park

[2012] EWHC 3453 (Ch)

;

[2013] FSR 27

[9]DKH disclaimed any generalised claim to UK design right by reference to configuration. DKH said that its claim to designs was limited to the two specific designs embodied in the two relevant parts of the Academy gilet. Ms Berkeley confirmed in argument that the list of features quoted above from the Re-Amended Particulars of Claim did no more than identify the significant features of the two designs that matter for the purpose of these proceedings. The complaint raised by H Young therefore has no basis on the facts of this case.

[10]There was nonetheless argument regarding the effect of s.1(1) of the 2014 Act. As I have said, it deleted the words “any aspect of” from s.213(2) of the 1988 Act. The 2014 Act came into force on 1 October 2014 and there are no transitional provisions qualifying s.1(1) (cf ss.1(4), 2(3) and 3(6) of the Act and transitional provisions dealing with other matters in SI 2014 No. 2330 which brought the Act into force). Both Ms Berkeley and Ms Reid submitted that I had to construe the designs claimed by DKH according to the new shorter definition and I agree that is the case.

[11]The first step in assessing the effect of s.1(1) is to determine what the words taken out used to mean. In Dyson Ltd v Qualtex (UK) Ltd

[2006] RPC 31

, Jacob LJ, with whom Lloyd and Tuckey LJJ agreed, said this:

“What is an “aspect of design?: the “visually significant” point [22] So I turn to the individual points argued, of which this was the first. UDR can subsist in the “design of any aspect of the shape or configuration (whether internal or external) of the whole or part of an article.”

This is extremely wide—it means that a particular article may and generally will embody a multitude of “designs”—as many “aspects” of the whole or part of the article as can be. What the point was of defining “design” in this way I do not know. The same approach is not adopted for ordinary copyright where the work is treated as a whole. But even with this wide definition, there is a limit: there must be an “aspect” of at least a part of the article. What are the limits of that? I put it this way in A. Fulton Co Ltd v Totes Isotoner (UK) Ltd [2004] R.P.C. 16; [2003] EWHCA Civ 1514 at [31]:

“The notion conveyed by ‘aspect’ in the composite phrase … is ‘discernible’ or ‘recognisable’”. [23] Mr Arnold suggested that the limit was more extensive—so as to exclude a “mere twiddle” (see Volumatic v Myriad, unreported April 10, 1995). Sir John Vinelott there settled on the test of “visual significance.”

That is all right for features of shape provided one remembers that UDR can subsist in an aspect of part of an article. The test does not mean that one can simply forget an aspect of the design of a whole article on the grounds that it is a visually insignificant feature of the design of the whole article. If one focuses on that aspect consisting of the alleged “twiddle” alone it is difficult to see how it can be visually insignificant. That is why I prefer my formulation.”

[12]It would seem that the reason for the extreme width of the definition of ‘design’, as Jacob LJ saw it, was that the definition of ‘design’ including the shape or configuration of any part of an article, in contrast with copyright which subsists in the copyright work as a whole. Jacob LJ appears to suggest that “any aspect of” in s.213(2) has a limiting function, that is to say it excludes from the definition of ‘design’ a feature which is neither discernible nor recognisable. However on that basis the deletion of “any aspect of” from s.213(2) would extend the scope of what qualifies as a design.

[13]Plainly that is not what Parliament intended. Paragraph 10 of the explanatory notes at the end of the 2014 Act says this:

“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.”

[14]Ms Berkeley submitted that s.1(1) of the 2014 Act has no effect at all since before its entry into force design right could subsist in any part of an article and that is still the case. I do not accept that there has been no change – it would be contrary to the usual principles of statutory construction. I think I must assume that the subsection makes a difference and, guided by the explanatory note, I must further assume that the scope of what can constitute a design under s.213(2) has narrowed. The words “any aspect of” permitted variations of what a party could claim as a design which are no longer available. Spotting why that might be is not easily done just by looking at the words of s.213(2).

[15]The definition of a Community design set out in art.3 of Council Regulation (EC) 6/2002 (“the Design Regulation”) is the following:

“For the purpose of this Regulation: (a) “design” means the appearance of the whole or part of a product resulting from the features of, in particular, the lines, contours, colours, shape, texture and/or materials of the product itself and/or its ornamentation.” (a) “design” means the appearance of the whole or part of a product resulting from the features of, in particular, the lines, contours, colours, shape, texture and/or materials of the product itself and/or its ornamentation.”

[16]There is no reason to suppose that Parliament intended the new definition of ‘design’ in s.213(2) to be identical to that in the Design Regulation and plainly it isn’t. However for policy reasons of consistency where that can be achieved, there is much to be said for treating “the design of the shape or configuration (whether internal or external) of the whole or part of an article” as having a meaning as close as possible to “the appearance of the whole or part of a product”. One route to such a result would be to interpret the effect of s.1(1) of the 2014 Act as being that it 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 (see above).

[17]In all events, bearing in mind the way that DKH has defined the two designs it claims – both specific and embodied in (overlapping) parts of the Academy gilet – I take the view that Ms Berkeley is right to this extent: s.1(1) of the 2014 Act makes no difference to these proceedings.

[18]A further happy consequence of the way in which DKH puts its case is that the two designs relied on are almost the same in the context of both Community design and UK design right. The distinction is that surface decoration (on the buttons and as created by stitching) are to be taken into account in the context of Community designs but are excluded in relation to UK design right, see s.213(3)(c) of the 1988 Act. Although colour could also have been a feature of the Community designs, it formed no part of DKH’s claim. Subsistence – lack of originality through copying one or more earlier designs The law

Subsistence – lack of originality through copying one or more earlier designs

[19]Where it is established that the design in issue was created by reference to one or more earlier designs, the test for originality in this sense is whether sufficient skill, effort and aesthetic judgment was expended by the author in the creation of the design in issue, see Magmatic at first instance at [84]. Assessment

[20]The First and Second Designs were created by James Holder, brand and design director of DKH’s parent company. In his witness statement Mr Holder described how he designed the Academy gilet in late February or early March 2009. In brief he created a drawing based on the design of an earlier SUPERDRY-branded product, the ‘Lumberjack’ hooded shirt. The drawing was given by Mr Holder to a Chinese manufacturer, World Target, which has an office in Hong Kong, during a visit there by Mr Holder. The design drawing refers to a ‘Ruehl’ sample. Ruehl is the name of an American brand of outerwear. In his witness statement Mr Holder said this reference was to serve as a guide to the weight of fabric and wadding to be used and the colour of the fabric. He said that his drawing of the Academy hood came from his recollection of the hood on the Lumberjack shirt. A physical sample was provided to World Target comprising a gilet, which Mr Holder thought might have been an earlier design called ‘Rigger’, with a hood from a Lumberjack shirt and a zip pinned to join the two. World Target produced prototypes which, Mr Holder said, were sufficiently good that they embodied the final Academy design save for minor details.

[21]Ms Reid submitted that Mr Holder was a defensive witness whose evidence should not be trusted. I do not agree. He was uncertain in cross-examination about some dates, but that seemed to me to be a product of not having re-read his witness statement with care before going into the witness box. This is never a good idea but does not by itself establish that a witness is unreliable. I don’t think that Mr Holder’s occasional vagueness about dates supports the allegation that the chronology he had set out in his statement was inaccurate to any material degree.

[22]The only substantive point advanced by H Young in relation to this aspect of its attack on the originality of the two designs in issue was the allegation that Mr Holder had not designed the whole of the Academy gilet and that part of it had been designed by World Target. In cross-examination it was put to Mr Holder that World Target had worked out sizing (dimensions for sizes small, medium, large and so on) and also that World Target had incorporated a chin guard based on the sample provided rather than the drawing. The drawing featured no chin guard, though was referred to by Ms Reid as an ‘industry standard’. Mr Holder agreed. Neither of these seem to me to undermine Mr Holder’s claim to have been the designer of the Academy gilet or DKH’s claim to ownership of the rights in the First and Second Designs. I asked Ms Reid, on the assumption that World Target had significantly contributed to those designs, what consequence in law was being advanced. Ms Reid said there was no allegation of joint ownership of rights and said that she merely relied on World Target’s design contribution to challenge DKH’s case that Mr Holder designed the Academy gilet.

[23]I think in the end this went nowhere. I find that the Academy gilet was designed by Mr Holder, that in doing so he relied on his recollection of at least one earlier design, the Lumberjack hood, but I have no doubt that he expended sufficient skill, effort and aesthetic judgment such that neither of the two designs presently in issue lacks originality because of such reliance. Interface – must fit The law

Interface – must fit

[24]H Young relies on s.213(3)(b)(i) of the 1988 Act:

“(3) Design right does not subsist in – … (b) features of shape or configuration of an article which – (i) enable the article to be connected to, or placed in, around or against, another article so that either article may perform a function,” … (b) features of shape or configuration of an article which – (i) enable the article to be connected to, or placed in, around or against, another article so that either article may perform a function,”

[25]I was referred to the following passage from the judgment of Laddie J in Ocular Sciences Ltd v Aspect Vision Care Ltd

[1997] RPC 289

, at 424:

“This is sometimes referred to as the interface provision. Its original purpose was to prevent the designer of a piece of equipment from using design right to prevent others from making parts which fitted his equipment. As I read it, any features of shape or configuration of an article which meet the interface criteria must be excluded from being considered as part of the design right. Furthermore a feature which meets the interface criteria must be excluded even if it performs some other purpose, for example it is attractive. There is also nothing in the provision which requires the feature to be the only one which would achieve the proper interface. If a number of designs are possible each of which enables the two articles to be fitted together in a way which allowed one or other or both to perform its function, each falls within the statutory exclusion.”

Assessment

[26]H Young’s case in relation to the ‘must fit’ defence from design right protection was pleaded (Amended Defence, paragraph 7(o)) as excluding ‘technical features’ of the body of the gilet and the hood which enable each of them to be connected to the other so that each may perform their function. At trial this was expressed to be limited to the zip fastening which connects gilet and hood.

[27]It seems to me the only features of shape or configuration of the zip which enable part of the zip to be connected to, or placed in, around or against another part of the zip (or other article) and thus allows the zip (or other article) to perform its function, are the teeth of the zip. I accept that the design of the teeth are excluded from design right protection pursuant to s.213(3)(b)(i). DKH did not claim any reliance on that part of the two designs in issue, which parts were self-evidently not created by Mr Holder.

Method or principle of construction

[28]Section 213(3)(a) states that design right does not subsist in “a method or principle of construction”.

[29]H Young submitted that features of the designs claimed by DKH were excluded from design right protection because, as defined in paragraph 4 of the Re-Amended Particulars of Claim (see above), there is no limitation as to the shape of each of the features selected. The design of the flap, placket collar or drawstrings, as the case may be, must be approximately rectangular in shape, sometimes with the further requirement of having rounded corners, but otherwise they could be any shape. Therefore, H Young argued, those claimed designs amounted to a method or principle of construction.

[30]This is a variation on the attack already referred to in relation to the nature of a design within the meaning of s.213(2) which may be protected by design right. Aside from any other possible objection, it suffers from the same flaw: DKH claims the two designs identified in paragraph 4 of the Re-Amended Particulars of Claim to be those specifically embodied in its article, that is to say the Academy gilet. In my view none of the features of two designs constitutes either a method or principle of construction.

Subsistence – commonplace design

[31]H Young alleges that each of the features identified by DKH in paragraph 4(1)(a), (b) and (c)(ii) of the Re-Amended Particulars of Claim, save for the positioning of the zip for the hood, is commonplace and that the combination of these is also commonplace. In support of this H Young relied on 10 items of prior art and the evidence of an expert, Emanuel Silverman. The law

[32]Section s.213(4) of the 1988 Act states:

“(4) A design is not “original” if it is commonplace in the design fieldin question at the time of its creation.”

This has been amended by s.1(3) of the 2014 Act so that to be denied originality the design must have been commonplace in a qualifying country within the meaning of s.217(3) of the 1988 Act. However the amendment only applies to designs created after 1 October 2014 (s.1(4)) so the change has no application to these proceedings.

[33]Prior art which is liable to render a design ‘commonplace’ will not have been obscure. It is thus likely that the author of the design was familiar with that prior art when the design was created. It is to be assumed that he or she did not slavishly copy any one item from this prior art, otherwise the design would lack originality without having to worry about whether it was commonplace. Therefore it is possible for the author of a design to expend sufficient skill and labour in its creation to satisfy the test of originality in the narrow sense (analogous to originality in the context of copyright) but in so doing to draw on commonplace sources for the significant features of the design and for the arrangement of those features, such as to create a design which is commonplace within the meaning of s.213(4).

[34]In Ocular Sciences Laddie J looked at the origin of the term ‘commonplace’ as subsequently transposed into s.213(4), namely Council Directive 87/54/EEC on the legal protection of topographies of semiconductor products. He declined to define ‘commonplace’ but gave flavour to the idea by saying (at p.429):

“Any design which is trite, trivial, common-or-garden, hackneyed or of the type which would excite no particular attention in those in the relevant art is likely to be commonplace.”

This characterisation was twice referred to by Mummery LJ (with whom Simon Brown LJ and Sir Christopher Slade agreed) in Farmers Build Ltd v Carier Bulk Materials Handling Ltd

[1999] RPC 13

(at pp. 477 and 479) and apparently although not explicitly endorsed. Mummery LJ also said (at p. 479):

“Laddie J was right not to attempt a definition of “commonplace” in the Ocular case. Every attempt to do so is doomed to failure. The only outcome is a list of different words dredged up from the dictionaries. The words in the dictionary list have different overtones according to context. It may be positively misleading to substitute one of those dictionary words for the word used by Parliament. It is more instructive for the court to look wider for indications of the purpose of the provision to be construed and, in particular, to examine the context in which the relevant provision was enacted.”

[35]Mummery LJ went on to set out a five-point approach that a court should take when faced with an assessment of whether a design is commonplace:

“(1) It should compare the design of the article in which design right is claimed with the design of other articles in the same field, including the alleged infringing article, as at the time of its creation. (2) The court must be satisfied that the design for which protection is claimed has not simply been copied (e.g. like a photocopy) from the design of an earlier article. It must not forget that, in the field of designs of functional articles, one design may be very similar to, or even identical with, another design and yet not be a copy: it may be an original and independent shape and configuration coincidentally the same or similar. If, however, the court is satisfied that it has been slavishly copied from an earlier design, it is not an “original” design in the “copyright sense” and the “commonplace” issue does not arise. (3) If the court is satisfied that the design has not been copied from an earlier design, then it is “original” in the “copyright sense”

. The court then has to decide whether it is “commonplace”. For that purpose it is necessary to ascertain how similar that design is to the design of similar articles in the same field of design made by persons other than the parties or persons unconnected with the parties. (4) This comparative exercise must be conducted objectively and in the light of the evidence, including evidence from experts in the relevant field pointing out the similarities and the differences, and explaining the significance of them. In the end, however, it is for the court and not for the witnesses, expert or otherwise, to decide whether the design is commonplace. That judgment must be one of fact and degree according to the evidence in each particular case. No amount of guidance given in this or in any other judgment can provide the court with the answer to the particular case. The closer the similarity of the various designs to each other, the more likely it is that the designs are commonplace, especially if there is no causal link, such as copying, which accounts for the resemblance of the compared designs. If a number of designers working independently of one another in the same field produce very similar designs by coincidence the most likely explanation of the similarities is that there is only one way of designing that article. In those circumstances the design in question can fairly and reasonably be described as “commonplace”. It would be a good reason for withholding the exclusive right to prevent the copying in the case of a design that, whether it has been copied or not, it is bound to be substantially similar to other designs in the same field. (5) If, however, there are aspects of the plaintiff’s design of the article which are not to be found in any other design in the field in question, and those aspects are found in the defendant’s design, the court would be entitled to conclude that the design in question was not “commonplace” and that there was good reason for treating it as protected from misappropriation during the limited period laid down in the 1988 Act.”

[36]In Dyson the Court of Appeal endorsed at least in part what Mummery LJ had said in Farmers Build, but doubted that the differences of opinion as to the meaning of ‘commonplace’ expressed in the various authorities had any significance. Jacob LJ also referred back to what he had said in Lambretta Clothing Co Ltd v Teddy Smith (UK) Ltd

[2005] RPC 6

at [56]:

“…what really matters is what prior designs the experts are able to identify and how much those designs are shown to be current in the thinking of designers in the field at the time of creation of the designs.”

[37]As to the design field in question, it will be the field with which a notional designer of the article in issue will be familiar (see Lambretta, at [45]).

[38]In addition, going back to Ocular Sciences, immediately following the passage I have quoted above, Laddie J said this (at p.429):

“This does not mean that a design made up of features which, individually, are commonplace is necessarily itself commonplace. A new and exciting design can be produced from the most trite of ingredients. But to secure protection, the combination must itself not be commonplace. … In many cases the run of the mill combination of well known features will produce a combination which is itself commonplace.”

[39]The design of an article consists of a combination of features in a particular arrangement, i.e. spatial juxtaposition. Consequently to describe a design as ‘commonplace’ must mean that the arrangement of the significant features of the design was commonplace in the relevant field at the relevant time. One way of looking at the assessment which the court must conduct, referred to in Farmers Build,is to say that first the court must identify the significant features of the design in issue. These should have been pleaded by the claimant. It may be necessary to resolve any dispute as to where each of them lies, at least roughly, on the spectrum between highly significant and insignificant to that design. Then the court must assess whether the particular arrangement of the significant features was commonplace at the relevant time.

[40]Usually this will only have been the case if there existed examples of that arrangement among the prior art. So the defendant will be challenged to produce evidence of prior art from the appropriate design field at the time the design in issue was created which embodies the relevant arrangement of the significant features. If there is no such prior art an allegation that the design in issue was commonplace is liable to fail. On the other hand the production of one or more examples of such prior art may establish that the design in issue was commonplace, subject to an alternative explanation. How many prior art items will be required to show that the design was commonplace will depend on the field in question, the notoriety of the prior art and of course appropriate limits on the evidence.

[41]In some cases it may be that the significant features were individually commonplace and yet although the particular arrangement of them had never existed before the creation of the design in issue, that design was nonetheless commonplace. Ocular Sciences seems to have been such an instance, see p.430. However Ocular Sciences was concerned with the design of a contact lens and the commonplace features relied on were dimensions (see p.428). The judge appears to have found that even though the particular combination of dimensions had never been used before, collectively they were still commonplace. No doubt Laddie J concluded that the spatial juxtaposition of the various features of a contact lens, each having hackneyed dimensions, was commonplace because each feature was where one would expect it to be. It seems to me, though, that this would generally apply only in relation to functional items which are not complex in their design. Certainly it is to be contrasted with the position in relation to articles such as fashion items. There the significant features tend to consist of more than dimensions and often it is the particular arrangement of features that creates an aesthetic effect which, if new, takes the design above the commonplace. In the latter case, for the design to have been commonplace, the arrangement as well as the significant features must have been commonplace.

[42]In this context the ‘significance’ of a feature is not related to how hackneyed it is. It is to do with the general contribution of the feature to the overall appearance of the design. The presence of four legs on a chair is a (collective) feature both significant and commonplace. A particular rounded end to the legs, of precisely defined radius, may be neither commonplace nor significant.

Assessment

[43]The Academy gilet and thus the First and Second Designs were created in about March 2009. Professor Bruce Montgomery, who gave expert evidence on behalf of DKH, said that the relevant field was outerwear and casual wear in general, being the field with which the notional designer would have been familiar. Mr Silverman for H Young said it was clothing in general. I accept Professor Montgomery’s evidence that the notional designer would be unlikely to seek inspiration beyond outerwear and casual wear, though little turned on it.

[44]I asked Ms Reid to identify the prior art with a front central portion and hood which was closest to the First Design. Ms Reid said it was a gilet called ‘Shooter’ which was first sold by H Young in the third quarter of 2008. No sample of the Shooter gilet was available. There was an unclear photograph of the hood and a drawing which indicated that the design was created on 10 August 2007. The drawing did not allow a detailed impression of its design in relation to the features relied on by DKH. Moreover H Young’s expert, Mr Silverman, placed no more than marginal reliance on the Shooter gilet in his evidence in support of the contention that the First and Second Designs were commonplace. I will therefore say nothing more about it.

[45]Mr Silverman relied instead on two prior art gilets, one identified as ‘Abercrombie & Fitch’ and the other as ‘Ruehl’, the gilet which Mr Holder referred to in his design drawing. Both came from the well known retailer Abercrombie & Fitch. ‘Ruehl’ was apparently a sub-brand used by Abercrombie & Fitch until 2009. I discount the Ruehl gilet as being of any relevance to this part of the case because in cross-examination Mr Silverman accepted that the Ruehl gilet was obscure at the time the Academy gilet was designed.

[46]Mr Silverman’s evidence in relation to commonplace design was set out in paragraphs 48 to 64 of his report (I leave out his references to the Ruehl gilet):• The features identified in paras. 4.1(a) and (b) of the Re-Amended Particulars of Claim were present in the Abercrombie & Fitch gilet and were therefore commonplace. The features of para. 4.1(c)(i) were sub-divided as follows:

• “A hood which is zipped on to the body of the gilet at the bottom of the collar of the gilet” was not present in the Abercrombie & Fitch gilet because there is no hood. Mr Silverman said that zip-off hoods were however commonplace.

• “The zip fastening for the hood is found at the bottom or base edge of the inside of the collar so that the collar of the gilet is a flap which sits externally to the base of the hood” was a feature that was neither known nor commonplace at the relevant time.

• “The collar of the gilet being an approximate rectangular strip in shape which is fastened by the front closing central zip as referred to in (a) above” was commonplace because it featured in the Abercrombie & Fitch gilet.

• The features in para. 4.1(c)(ii), the inner flap covering the zip which connects the hood and body, were not present in any prior art of which Mr Silverman was aware but he said that it lacks interest or originality.

• The features in para. 4.1(c)(iii) were commonplace. They were present in five items of prior art which, in Mr Silverman’s view, would have been known by designers in the clothing field.

[47]Professor Montgomery accepted that(a) the use of drawstrings for a hood,

(b) a detachable hood and

(c) central closure for a garment with an overlaying placket were all commonplace features at the relevant time, but no others. In his view the particular combination of all the features in the First and Second Designs was not commonplace. Professor Montgomery also said that the items of prior art relied on by Mr Silverman had either no, or only a slight impact in relation to the relevant design field. Specifically, in the absence of sales figures for the Abercrombie & Fitch gilet, he thought that it was unlikely to have been well known to consumers or designers in the field. He did, however, accept that the Abercrombie & Fitch (and Ruehl) gilet embodied all the features set out in paragraphs 4.1(a) and (b) of the Re-Amended Particulars of Claim.

[48]I do not think that the evidence from Mr Silverman forms a sound basis for the allegation that either the First or Second Design was commonplace. His evidence that the individual features of the First Design apart from the hood were commonplace was based on the Ruehl and Abercrombie & Fitch gilets. As I have said, the Ruehl gilet was too obscure to be taken into account. With regard to the Abercrombie & Fitch gilet, I think it is possible for one item of prior art alone to establish that one or more features (or an arrangement of features) is commonplace but it would require evidence that the item in question was well established as part of the basic design repertoire of the notional designer at the relevant time. There was no such evidence in relation to the Abercrombie & Fitch gilet. Professor Montgomery who, unlike Mr Silverman, had experience as a clothes designer, was not aware of the Abercrombie & Fitch gilet before these proceedings.

[49]Turning to the Second Design (and the remainder of the First), that is to say the hood, the Abercrombie & Fitch gilet has no hood, although it has a collar which forms part of the design defined in paragraph 4.1(c) of the Re-Amended Particulars of Claim. Mr Silverman accepted that two features of the hood were not known at all at the relevant date. He referred to prior art to show that zip-off hoods in the general sense were commonplace. That may be so, but it is the particular design of the Academy zip-off hood that matters. In relation to the feature set out in paragraph 4.1(c)(iii), the drawstrings, Mr Silverman relied on four models of gilet marketed by H Young but conceded that their sales were relatively low.

[50]Finally Mr Silverman referred briefly to the hood of the Lumberjack shirt used by Mr Holder and speculated that it was the same as the Academy hood. There was a dispute at the start of the trial regarding the prior art, or design corpus, on which H Young was entitled to rely. This had not been settled, as it should have been at an earlier stage, by fixing a list (or possibly two lists) of the relevant prior art in the context of the UK design rights and the Community designs. Following argument I ruled that the design corpus for both purposes would be those designs appearing in Annexes A to I of the Amended Defence. These did not include the Lumberjack hood since it had been raised by H Young as prior art late in the day and, understandably, it had not been addressed by either expert more than in passing. In the event, the Lumberjack hood was put to Mr Holder in cross-examination in the context of how he had conducted his design process but he was not asked whether the Lumberjack hood had the features specified in paragraph 4.1(c) of the Re-Amended Particulars of Claim, no doubt because it did not form part of the prior art. I would add in passing that neither of the images of the Lumberjack hood that were in evidence showed that it had the features set out in paragraph 4.1(c). It was also not established that the design of the Lumberjack hood was available to the public either at the time the Academy gilet was designed or at the time the latter was made available to the public.

[51]Mr Silverman conceded that he could not point to even one item of prior art in which all the pleaded features of the First Design were present in the arrangement embodied in that article. He said this at paragraph 64 of this first report:

“I have not identified an item which pre-dates the Superdry “Academy” gilet and which incorporates the exact combination of all of the features. However, I consider that all of the features, when put together, would not evoke any interest. This is due to the fact that, individually, the features serve a technical function and/or are commonplace. The combination of design features relied upon by Superdry are bound to be substantially similar to other designs in the clothing and clothing design field.”

[52]In summary three points were advanced in support of the designs as a whole being commonplace. The first was that some of the features in the pleaded list could serve a technical function and were therefore commonplace. This has no basis in law. It is possible that a design feature which is wholly or partly functional may in some instances as a consequence be commonplace but this does not at all follow as a matter of course. The second point was that some of the design features pleaded could be ignored because they evoke insufficient interest, or are not significant, to use the term I have employed above. I do not accept that H Young was entitled to delete any features from DKH’s pleaded list on this basis. Thirdly, Ms Reid submitted that it was not necessary to cite prior art displaying the arrangement of the features of DKH’s designs if all those features were shown individually to be commonplace. I reject that submission. Leaving aside that all the features were not shown to have been commonplace, this is not an Ocular Sciences type case.

[53]I find that neither the First nor Second Design was commonplace in the relevant design field at the time of their creation.

Infringement

[54]Only secondary infringement is alleged. H Young admitted importation and sale of the Glaisdale gilets since July 2012. At a late stage H Young also admitted that the Glaisdale gilet was designed “by reference to” the Academy gilet (para.13(f) of the Amended Defence). Until July 2014 H Young had maintained that the Academy gilet formed no part of the design process but its own disclosure required H Young to modify that stance. Though even by the start of the trial it was not completely clear what the new stance was. At first Ms Reid disclaimed any concession that H Young had been influenced by the design of the Academy gilet – it was a matter for DKH to prove. This later became an admission that DKH’s design influenced H Young to some degree. I think the burden on DKH to show that there was copying, somewhere on the scale from negligible to enough for infringement, has been satisfied by that admission.

[55]The first issue which I have to decide in relation to infringement is whether the relevant parts of the Glaisdale gilets were infringing articles. This now just means whether the relevant parts of the Glaisdale gilet were made substantially to the First and/or Second Designs – see s.226(1) and (2) of the 1988 Act.

[56]Secondly, DKH must establish that at the time of importation or sale H Young knew or had reason to believe that the Glaisdale gilets were in part infringing articles. Substantially to the First and/or Second Designs –

The law

[57]Substantiality is to be assessed through the eyes of the type of person to whom the design was directed, in this case a potential customer for a gilet – see C & H Engineering v F Klucznik & Sons Ltd

[1992] FSR 421

[58]In Virgin Atlantic Airways Ltd v Premium Aircraft Interiors Group Ltd

[2009] EWHC 26 (Pat)

; [2009] ECDR 11, Lewison J said this:

“[31] What must be established is that the design in which design right subsists has been copied so as to produce “articles exactly or substantially to that design”

. Two points arise. First, although the Act allows design right to subsist in (and be claimed for) part of an article, the definition of reproduction speaks only of making “articles”. There is, therefore, a linguistic mismatch between subsistence of design right and the right that it confers. But it must obviously have been Parliament's intention that if design right subsisted in part of an article (e.g. the teapot spout) the right would be infringed by incorporating a copy of that spout in another teapot, even if the infringing spout is not itself a whole article. Secondly, even if the design has been copied, the infringing article must be produced “exactly or substantially” to the copied design. Mere similarity is not enough. [32] In C&H Engineering v F Klucznik & Sons Ltd (No.1) [1992] F.S.R. 421 Ch D Aldous J. said:

“Under section 226 there will only be infringement if the design is copied so as to produce articles exactly or substantially to the design. Thus the test for infringement requires the alleged infringing article or articles be compared with the document or article embodying the design. Thereafter the court must decide whether copying took place and, if so, whether the alleged infringing article is made exactly to the design or substantially to that design. Whether or not the alleged infringing article is made substantially to the plaintiff's design must be an objective test to be decided through the eyes of the person to whom the design is directed.” [33] Although, at least in theory, two separate criteria must be satisfied viz. copying and making articles exactly or substantially to the copied design, it is not easy to conceive of real facts (absent an incompetent copyist) in which a design is copied without the copy being made exactly or substantially to the copied design. In practice, if copying is established, it is highly likely that the infringing article will have been made exactly or substantially to the protected design. If copying is not established, then whether the article is the same or substantially the same as the protected design does not matter. However, similarity in design may allow an inference of copying to be drawn.” “Under section 226 there will only be infringement if the design is copied so as to produce articles exactly or substantially to the design. Thus the test for infringement requires the alleged infringing article or articles be compared with the document or article embodying the design. Thereafter the court must decide whether copying took place and, if so, whether the alleged infringing article is made exactly to the design or substantially to that design. Whether or not the alleged infringing article is made substantially to the plaintiff's design must be an objective test to be decided through the eyes of the person to whom the design is directed.”

[59]In this last paragraph Lewison J drew on what the House of Lords had said in Designers Guild Ltd v Russell Williams (Textiles) Ltd

[2001] 1 All ER 700

;

[2001] FSR 11

. Both judgments come close to endorsing “the rough practical test that what is worth copying is prima facie worth protection” without quite going that far. This comes from the judgment of Peterson J in University of London Press Ltd v University Tutorial Press Ltd

[1916] 2 Ch 601

, at 610, in the context of whether examination papers were original copyright works, though the majority in Ladbroke (Football) Ltd v William Hill (Football) Ltd

[1964] 1 WLR 273

(HL) found force in Peterson J’s maxim in the context of copyright infringement (Lord Reid at 279, Lord Hodson at 288 and Lord Pearce at 294.) Substantially to the First and/or Second Designs –

Assessment

[60]With one exception that was clearly visible, the features of the First and Second Design as pleaded (set out above) were present in the front and the hood of the Glaisdale gilet. The exception was that the overlaying placket in the Glaisdale gilet rises only as far as the base of the collar, not to the top of the collar as in the First Design, so that the top of the zip is visible in the Glaisdale gilet.

[61]H Young advanced two sets of distinctions between the First and Second Designs and the Glaisdale gilet. First, in addition to the shorter placket, the Amended Defence referred to other of the pleaded features of the First and Second Designs not present in the Glaisdale gilet. In reality these amounted to minor qualifications of the pleaded list. Save for one of them – the corner of the chin guard on the Glaisdale gilet is rounded, not square – these qualifications were not thought worthy of any mention by H Young’s expert, Mr Silverman (see below). Secondly, H Young relied on features present in the Glaisdale gilet which were either absent or different in the First and Second Designs. This is a legitimate approach. Unlike a case of patent infringement, the test is not simply whether the defendant has taken the elements of the claimant’s design ‘claim’, irrespective of what the defendant has added or altered. Assessing infringement involves a comparison between the claimant’s design and the defendant’s article (or the relevant part of it). Even where the defendant has taken all the pleaded elements of the claimant’s design, it is possible for these to be swamped by differences so that in the result the defendant’s article has not been made substantially to the claimant’s design. It is a reason why Peterson J’s maxim, only ever said to be a rough prima facie test, sometimes needs to be treated with caution.

[62]I turn to the design distinctions which Mr Silverman thought significant. In addition to the shorter placket in the Glaisdale gilet, Mr Silverman identified six further differences between that gilet and the First and Second Designs which he set out in paragraph 14 of his first report. At the start of the trial Ms Berkeley objected to paragraphs 14 to 17 of that report because no permission had been given at the case management conference for expert opinion on the comparison in appearance between the two gilets. I acceded to DKH’s application to strike out those paragraphs but allowed Ms Reid to refer to them solely as a written record of submissions on similarities and differences she might wish to make. Ms Reid submitted that the additional differences listed by Mr Silverman in his paragraph 14 were important. They were:(a) The collar of the Academy gilet is greater in height towards the front, whereas the collar of the Glaisdale gilet is approximately constant in height.

(b) The placket of the Glaisdale gilet is wider than that of the Academy gilet.

(c) The Glaisdale placket has four vertical stitched lines running the length of placket. The Academy gilet has no such stitching.

(d) The Glaisdale placket is secured to the body of the gilet by press studs whereas the Academy gilet uses buttons – a visible difference.

(e) The corner of the Academy chin guard is square, whereas its equivalent in the Glaisdale gilet is rounded.

(f) The Glaisdale gilet has a 3cm wide white tape secured to the inside front of the hood which is not present on the Academy hood. Ms Reid in her skeleton argument added to the list, referring to edged stitching on the Academy placket and stitching along the collar of the Academy gilet. These are minor features and I can see why Mr Silverman did not refer to them.

[63]I assume that the reason for no permission having been granted at the CMC to serve expert evidence on the comparison in appearance between the gilets was that this was an instance in which the eye of the court, standing in for the potential customer of gilets of this type, could make the comparison without assistance from experts. I agree.

[64]For the purpose of UK unregistered design right I should ignore difference (c) as being surface decoration, see s.213(3)(c) of the 1988 Act. The same applies to the stitching differences added by Ms Reid, to the extent that they are relevant. To my eye the similarities relied on by DKH have more visual significance than, and significantly outweigh, the differences set out above. Overall it seems to me that the relevant parts of the Glaisdale gilet were made substantially to the First and Second Designs.

Knowledge

[65]In the Re-Amended Particulars of Claim DKH inferred that H Young had the requisite knowledge broadly on two grounds, set out in paragraph 9. The first is that it is well known in the clothing trade that intellectual property rights are likely to subsist in articles such as the Academy gilet and therefore it is to be inferred that “relevant persons at the Defendant” would have had that knowledge. DKH alleges that H Young thus had the requisite knowledge from the date of first copying. Secondly and alternatively, DKH pleaded reliance on its letter before action dated 14 February 2013.

[66]In response the Amended Defence required the Claimant to prove that it was well known in the clothing trade that intellectual property rights are likely to subsist in gilets. H Young avoided pleading to the allegation that its own personnel must have known as much by stating that it was unclear who “relevant persons at the Defendant” were and accordingly did not plead to it at all. However the Amended Defence admits receipt of the letter of 14 February 2013 and that H Young continued to sell the Glaisdale gilet thereafter.

[67]“The Defendant’s knowledge of the Academy gilet” was in the list of issues settled at the CMC on 19 November 2013. It is under the heading “Infringement” and I take it to be a compressed way of identifying the present issue of knowledge or reason to believe. Permission was given to both sides to serve witness statements dealing with this issue (para. 8 of the Order).

[68]The statement of truth at the end of the Re-Amended Particulars of Claim was signed by James Holder. In the normal course there would have been an order at the CMC that the pleadings should stand as evidence at trial. Apparently this was overlooked by the parties and there was no such order. At the start of the trial Ms Berkeley asked for permission that paragraphs 3 and 6.2 of the Re-Amended Particulars of Claim should stand as evidence in chief. This was not resisted. Nothing was said about paragraph 9. The statement of truth at the end of the Amended Defence was signed by Alan McIvor, a director of H Young. No application was made to have any part of the Amended Defence stand as evidence. So there was no evidence to be derived from either pleading regarding knowledge.

[69]Mr Holder appeared as a witness but said nothing in his witness statement or in the witness box about the knowledge of IP rights in the clothing trade. Mr McIvor did not appear as a witness for H Young. Instead Karl Read, an employee of H Young, filed a witness statement. He said nothing about the trade’s knowledge or, more significantly, H Young’s knowledge.

[70]The upshot is that there was no evidence one way or the other in relation to DKH’s contention that those in the clothing industry would have known that copying a garment such as the Academy gilet would constitute an infringement of IP rights and that the relevant individuals at H Young therefore must have known. None of this was the subject of any discussion at trial.

[71]H Young’s evasive pleaded defence to this aspect of DKH’s case could suggest that the individuals responsible for the acts complained of at H Young knew that their copying of the Academy gilet would infringe rights likely to be held by DKH – if a court were to decide that too much had been copied. It would not have surprised me to learn that H Young and the industry at large are aware of such rights at least on a general level. But I cannot reach a concluded view about H Young’s knowledge or reason to believe. Consequently I reject DKH’s submission that H Young knew or had reason to believe that the Glaisdale gilets were in part infringing articles before the date of receipt of the letter before action.

[72]Following receipt of that letter and a reasonable period for investigation H Young is to be imputed with the requisite knowledge. Absent any evidence from H Young as to what such a reasonable period would be, I will say that it is 14 days. Within that time H Young should have discovered, to the extent that it was not already known, that the Academy gilet had been copied and the extent of the copying. A belief, however honest, that this extent did not amount to infringement does not prevent H Young from having had reason to believe that the Glaisdale gilets were in part infringing articles. Community unregistered design right Not designs within the meaning of art.3(a)

Community unregistered design right

[73]H Young alleged that the First and Second Designs were not designs within the meaning of art.3(a) of the Design Regulation because they were each defined to include any design containing the list of features in paragraph 4 of the Re-Amended Particulars of Claim. That is not in fact how they are defined, as I have discussed above. This objection falls away.

Ownership of the Community designs

[74]The right to a Community design vests in the designer or his successor in title unless he is an employee acting in the execution of his duties or following his employer’s instructions (art.14 of the Design Regulation). The First and Second Designs were created by Mr Holder. In his witness statement Mr Holder identified himself as the Brand and Design Director of SuperGroup PLC, the parent company of the claimant. He said that he was not an employee of Laundry Athletics LLP (of which more below) but was otherwise vague about his employment status in March 2009. However it appears to be common ground that, subject to any agreement to the contrary effective in law, Mr Holder would have been owner of the First and Second Designs as Community designs when they were created.

[75]A Community design can be assigned as an object of property. Art.27(1) says this:

“1. Unless Articles 28, 29, 30, 31 and 32 provide otherwise, a Community design as an object of property shall be dealt with in its entirety, and for the whole area of the Community, as a national design right of the Member State in which: (a) the holder has his seat or his domicile on the relevant date; or (b) where point (a) does no apply, the holder has an establishment on the relevant date.”

None of arts.28-32 apply to the present case. (a) the holder has his seat or his domicile on the relevant date; or (b) where point (a) does no apply, the holder has an establishment on the relevant date.”

[76]Mr Holder is and has at all times been domiciled in the UK. Therefore the First and Second Designs as Community designs fall to be dealt with as national design rights of the UK.

[77]Ms Berkeley argued that the effect of art.27 is that English law applies to the assignment of the First and Second Designs as if they were UK unregistered design rights. That brings s.223(1) and (2) of the 1988 Act into play:

“223 Prospective ownership of design right (1) Where by an agreement made in relation to future design right, and signed by or on behalf of the prospective owner of the design right, the prospective owner purports to assign the future design right (wholly or partially) to another person, then if, on the right coming into existence, the assignee or another person claiming under him would be entitled as against all other persons to require the right to be vested in him, the right shall vest in him by virtue of this section. (2) In this section— “future design right” means design right which will or may come into existence in respect of a future design or class of designs or on the occurrence of a future event; and “prospective owner” shall be construed accordingly, and includes a person who is prospectively entitled to design right by virtue of such an agreement as is mentioned in subsection (1).” “future design right” means design right which will or may come into existence in respect of a future design or class of designs or on the occurrence of a future event; and “prospective owner” shall be construed accordingly, and includes a person who is prospectively entitled to design right by virtue of such an agreement as is mentioned in subsection (1).”

[78]Before the two designs were created in March 2009 Mr Holder entered into a written agreement with Laundry Athletics LLP, a UK company based in Gloucestershire, dated 1 May 2008 (“the Laundry Athletics Agreement”). Clause 1 was as follows, in which ‘the Designer’ is Mr Holder and ‘the Assignee’ is Laundry Athletics: “1 ASSIGNMENT 1.1 In consideration of the sum of £1 (receipt of which the Designer hereby acknowledges), the Designer assigns to the Assignee, with full title guarantee for the whole term of such rights together with any and all reversions, extensions or renewals, the following rights throughout the world (“the Rights”): … 1.1.2 any design right (and all other rights in the nature of design right) whether registered or unregistered subsisting in the Works and the Future Works and in all preliminary drafts or earlier versions of the Works and the Future Works; 1.1.3 all other intellectual property rights of whatever nature, whether now known or created in the future, to which the Designer is now or may at any time after the date of this assignment be entitled by virtue of any of the laws in force in any part of the world, in and to the Works and the Future Works and in all preliminary drafts or earlier versions of the Works and the Future Works; “The Works” and “the Future Works” are defined in recitals (A) and (B): “(A) Since 18th June 2001 the Designer has created original clothing designs which have subsequently been used by the Assignee (together “the Works”). (B) The Designer has agreed with the Assignee to create further clothing designs for the Assignee (together “the Future Works”).” … 1.1.2 any design right (and all other rights in the nature of design right) whether registered or unregistered subsisting in the Works and the Future Works and in all preliminary drafts or earlier versions of the Works and the Future Works; 1.1.3 all other intellectual property rights of whatever nature, whether now known or created in the future, to which the Designer is now or may at any time after the date of this assignment be entitled by virtue of any of the laws in force in any part of the world, in and to the Works and the Future Works and in all preliminary drafts or earlier versions of the Works and the Future Works;

[79]Ms Berkeley submitted that the combined effect of s.223 and the Laundry Athletics Agreement was that when the First and Second Designs were created the Community designs were owned by Laundry Athletics.

[80]On 7 March 2010 Laundry Athletics entered into a written deed of assignment with DKH (“the 2010 Assignment”). Under the terms of the 2010 Assignment all unregistered design rights owned by Laundry Athletics were assigned to DKH. Ms Berkeley submitted that therefore DKH owns the Community designs.

[81]On 29 September 2014 the Defence was amended. Paragraph 12(b) of the Amended Defence denies that the Laundry Athletics Agreement was capable in law of assigning legal title to any future Community design. Paragraph 12(c) raises a second argument that was not pursued by Ms Reid in her skeleton or otherwise and so I need not consider it.

[82]The point raised in paragraph 12(b) was foreshadowed in correspondence and on 18 July 2014 Mr Holder executed what was referred to by DKH as a confirmatory assignment (“the July 2014 Assignment”) to deal with the point, under which all IP rights in the Academy gilet together with accrued causes of action held by Mr Holder were assigned to DKH.

[83]Ms Reid submitted that the Laundry Athletics Agreement did not assign the Community designs to Laundry Athletics so they could not have been passed on to DKH in March 2010. Furthermore the July 2014 Assignment did not cure DKH’s difficulty.

[84]The argument was that art.27 of the Design Regulation refers exclusively to existing rights – there is no provision for the transfer of future rights. Therefore the only provision of the 1988 Act which could ever apply to the assignment of unregistered Community designs by reason of art.27 is s.222 (or, presumably, s.224). In support of her argument Ms Reid took me to Performing Right Society Ltd v B4U Network (Europe) Ltd

[2013] EWCA Civ 1236

;

[2014] FSR 17

and Performing Right Society Ltd v London Theatre of Varieties Ltd

[1924] AC 1

. These authorities undoubtedly show that prior to the introduction of s.37 of the Copyright Act 1956 (the predecessor to s.91 of the 1988 Act, which is the provision equivalent to s.223 in relation to copyright), an assignment of copyright in works not yet created operated only in equity as an agreement to assign copyright if and once the work had been created; a separate legal assignment had to be made once the work existed. The earlier PRS case indicates that this created difficulties which Parliament cured or minimised by enacting s.37 of the 1956 Act. I was not fully clear as to the point of this excursion. Either art.27(1) permits the assignment of future Community designs or it does not. I don’t think either PRS case helps to resolve this.

[85]In my view art.27(1) delegates to national law all matters concerning the dealing with Community designs as property, without restriction. Where this is the law of the United Kingdom the relevant provisions of the 1988 Act apply in full as they would to a right created under the laws of the United Kingdom. Where the right in question is an unregistered design right, the relevant provisions are ss.222 to 225. If the dealing in question is an agreement to assign a future unregistered Community design, s.223(1) and (2) apply.

[86]I therefore take the view that the Laundry Athletics Agreement was effective in making Laundry Athletics the owner of the Community designs in the form of the First and Second Designs upon their creation. By reason of the 2010 Assignment those Community designs were transferred to the ownership of DKH.

[87]Even if that were not the case, the July 2014 Assignment would have given rise to the same result. By this time the two Community designs had expired, as is common ground. Ms Reid argued that on a correct construction of the 2014 Assignment it did not apply to expired rights. I do not agree. The document uses broad language which to my mind encompasses any IP right of any sort owned by Mr Holder relating to the Academy gilet including, significantly, all accrued causes of action. I think those rights would include expired rights. Features solely dictated by technical function The law

Features solely dictated by technical function

[88]Art.8(1) of the Design Regulation states:

“1. A Community design shall not subsist in features of appearance of a product which are solely dictated by its technical function.”

[89]In Samsung Electronics (UK) Ltd v Apple Inc

[2012] EWCA Civ 1339

;

[2013] FSR 9

, Jacob LJ (with whom Longmore and Kitchin LJJ agreed) stated at [31] that features excluded under art.8(1) must be purely functional (my emphasis) and not to some degree chosen for the purpose of enhancing the product’s visual appearance. He referred to and agree with the decision of the OHIM Board of Appeal in R 690/2007-3 Lindner Recyclingtech GmbH v Franssons Verkstader AB [2010] ECDR 1. The Board considered the rival merits of approaches to the exclusion of functional designs from design protection, namely the ‘multiplicity-of-forms theory’ and the approach pioneered in the English courts, in particular by the House of Lords in Amp Inc v Utilux Pty Ltd

[1971] FSR 572

in the context of the Registered Designs Act 1949. The Board came down firmly in favour of the latter for the purpose of applying art.8(1), concluding as follows:

“[36] It follows from the above that art.8(1) CDR denies protection to those features of a product's appearance that were chosen exclusively for the purpose of designing a product that performs its function, as opposed to features that were chosen, at least to some degree, for the purpose of enhancing the product's visual appearance. It goes without saying that these matters must be assessed objectively: it is not necessary to determine what actually went on in the designer's mind when the design was being developed. The matter must be assessed from the standpoint of a reasonable observer who looks at the design and asks himself whether anything other than purely functional considerations could have been relevant when a specific feature was chosen.”

Assessment

[90]Paragraph 9 of the Amended Defence alleges that certain features of the First and Second Designs are solely dictated by their technical function. I can take the features together. Professor Montgomery in cross-examination accepted that all the features had a functional element but asserted that they all had an aesthetic purpose too. He said “Today, we live in an aesthetic design world.”

[91]Mr Silverman, although he preferred to emphasise the functional aspects of the First and Second designs, in the end agreed with Professor Montgomery. In cross-examination he was taken through the features which were alleged to have been dictated by function. He accepted that the Academy gilet was a fashion item, that designers of such items were creative, that the designer had choices in relation to each of the relevant features and that those choices affected the look of the garment.

[92]On that evidence the objection under art.8(1) fails. Designs of interconnections The law

Designs of interconnections

[93]Art.8(2) of the Design Regulation states:

“2. A Community design shall not subsist in features of appearance of a product which must necessarily be reproduced in their exact form and dimensions in order to permit the product in which the design is incorporated or to which it is applied to be mechanically connected to or placed in, around or against another product so that either product may perform its function.”

[94]It is not clear to me that H Young pursued its pleaded argument under art.8(2) but if it did, it was run together with the ‘must fit’ argument in relation to s.213(3)(b)(i) of the 1988 Act. For the same reason the argument does not succeed.

Complex product

[95]A ‘complex product’ is defined in art.3(c) of the Design Regulation as “…a product which is composed of multiple components which can be replaced permitting disassembly and re-assembly of the product.” Art.4(2) states:

“2. A design applied to or incorporated in a product which constitutes a component part of a complex product shall only be considered to be new and to have individual character: (a) if the component part, once it has been incorporated into the complex product, remains visible during normal use of the latter; and (b) to the extent that those visible features of the component part fulfil in themselves the requirements as to novelty and individual character.”

The consequence of a component part of a complex product lacking novelty and individual character is that it will not be protected by a Community design – see art.4(1). (a) if the component part, once it has been incorporated into the complex product, remains visible during normal use of the latter; and (b) to the extent that those visible features of the component part fulfil in themselves the requirements as to novelty and individual character.”

[96]The Amended Defence alleges this at paragraph 9(c) in relation to the Academy gilet:

“The gilet and the hood are component parts of a complex product comprising together the hooded gilet.”

It is also said that certain features of the hood and gilet are not visible during normal use and therefore lack novelty and individual character.

[97]Keeping this short, I will assume in H Young’s favour that the gilet and hood together constitute a complex product. There are only two component parts to that complex product which can be disassembled and reassembled: the gilet and the hood. Both component parts remain visible during the normal use of the ‘complex product’. This argument therefore fails.

Novelty and individual character

[98]Leaving aside the argument in relation to a complex product, H Young pleaded that the First and Second Designs both lack novelty and individual character. The allegation of lack of novelty was not pursued. The law

[99]The relevant articles of the Design Regulation are the following:

“Article 4 Requirements for protection 1. A design shall be protected by a Community design to the extent that it is new and has individual character. … Article 6 Individual character 1. A design shall be considered to have individual character if the overall impression it produces on the informed user differs from the overall impression produced on such a user by any design which has been made available to the public: (a) in the case of an unregistered Community design, before the date on which the design for which protection is claimed has first been made available to the public; … 2. In assessing individual character, the degree of freedom of the designer in developing the design shall be taken into consideration.”

Article 6 Individual character (a) in the case of an unregistered Community design, before the date on which the design for which protection is claimed has first been made available to the public; …

Article 6 Individual character

[100]Neither side made great play of the attributes of the informed user in this case, probably because the point was not thought to be controversial. I take the informed user to be a member of the public who uses gilets of the type in dispute with the characteristics identified by Judge Birss in Samsung Electronics (UK) Ltd v Apple Inc

[2012] EWHC 1882 (Pat)

; [2013] ECDR 1, at [33]-[35] and approved on appeal (cited above) at [10]-[11] and [13-18].

[101]Design freedom was not a point in issue either. Professor Montgomery’s view was that Mr Holder as designer of the First and Second Designs had neither a wide nor limited design freedom – somewhere between the two. This was not disputed.

[102]The relevant comparison is not between the design in issue and the design corpus collectively. The design in issue must be compared individually with each nominated item from the corpus. In

Case C-345/13

Karen Millen Fashions Ltd v Dunnes Stores [2014] Bus LR 756 the Court of

Justice of the European Union ruled:

“… article 6 of Regulation No 6/2002 must be interpreted as meaning that, in order for a design to be considered to have individual character, the overall impression which that design produces on the informed user must be different from that produced on such a user not by a combination of features taken in isolation and drawn from a number of earlier designs, but by one or more earlier designs, taken individually.”

Assessment

[103]The First and Second Designs were first made available to the public in November 2009.

[104]In relation to the First Design, according to Mr Silverman the two closest members of the design corpus were the Ruehl and Abercrombie & Fitch gilets, discussed above in the context of commonplace design. Neither has a hood. I take the view that the hood by itself has sufficient visual impact such that the overall impression produced by the First Design on the informed user differs from that produced by either the Abercrombie & Fitch or Ruehl gilets.

[105]As for the Second Design, the hood alone, the evidence from Mr Silverman regarding the alleged commonplace nature of the hood design shows that there was no one item in the design corpus which did not lack significant elements of the Second Design.

[106]I find that the First and Second Designs, as Community designs, have individual character. Infringement

The law

[107]The importation and marketing of the Glaisdale gilet were admitted. So was the copying of the Academy gilet, in effect as I have concluded (see paragraph 54 above). Therefore no issue arose under art.19 of the Design Regulation. Infringement turned on art.10:

Infringement

“Article 10 Scope of protection 1. The scope of the protection conferred by a Community design shall include any design which does not produce on the informed user a different overall impression. 2. In assessing the scope of protection, the degree of freedom of the designer in developing his design shall be taken into consideration.”

[108]The Court of Appeal in Magmatic Ltd v PMS International Ltd

[2014] EWCA Civ 181

; [2014] ECDR 20considered the correct approach to assessing the difference between the design corpus and a Community design and thus the overall impression produced by each:

“[44] … As Jacob L.J. observed in Procter & Gamble at [2007] EWCA 936 at [3]: “The most important things in a case about registered designs are: (i) The registered design; (ii) The accused object; (iii) The prior art. And the most important thing about each of these is what they look like.” [45] I would add that the two designs must therefore be considered globally and, as one would expect, the informed user will attach less significance to those features which form part of the design corpus and correspondingly greater significance to those features which do not. So also, the informed user will attach particular importance to features in respect of which the designer had a great deal of design freedom. The analysis is not limited to these considerations, however, for a global assessment also requires the designs to be considered having regard to the way in which the products to which the designs are intended to be applied are used, with some features having greater prominence than others, perhaps because they are more visible.” “The most important things in a case about registered designs are: (i) The registered design; (ii) The accused object; (iii) The prior art. And the most important thing about each of these is what they look like.”

[109]As I have said in relation to art.6, in the present case design freedom was not an issue.

[110]I referred to the design corpus above in the context of UK unregistered design. In summary: the First Design shares all its pleaded features with the Abercrombie & Fitch and Ruehl gilets apart from those claimed for the hood. Both these gilets are members of the design corpus in relation to the First Design and thus the body section of the First Design is part of the design corpus. It was not established that there was a hood among the design corpus that was closely similar to the Second Design.

[111]It follows from this that the informed user is liable to pay more attention to the features of the hood, but I would not push this too far. The features of the body of the gilet were all present in the design corpus but only in one gilet which Mr Silverman admitted to be obscure (Ruehl) and one (Abercrombie & Fitch) which was not shown to be extremely well known.

[112]I referred to the differences between the First Design and the Glaisdale gilet at paragraph 62 above. In the context of Community design, H Young is entitled to rely on all of them, including that at paragraph 62(c) plus the further stitching differences to the limited extent that they are relevant. Only one of those differences, at paragraph 62(f), concerns the hood, namely the presence of a white tape on the front inside of the Glaisdale hood.

[113]The informed user is deemed to be interested in gilets and to show a relatively high degree of attention when he or she uses the gilet. He or she has knowledge of the design corpus and therefore the Abercrombie & Fitch gilet, though the Ruehl gilet may have been too obscure to register attention.

[114]In my view the overall reaction of the informed user to both the First Design and the corresponding part of the Glaisdale gilet would be that they share the same design concept, namely the front of an Abercrombie & Fitch gilet with a similar hood attached to the collar in a similar way. I think in the present case for that reason the relevant part of the Glaisdale gilet would not produce on the informed user a different overall impression to that produced by the First Design. In other words, the differences between the First Design and the relevant part of the Glaisdale gilet would not be enough to dislodge the recognition of their shared design concept – Abercrombie & Fitch front plus similar hood – and would not in the mind of the informed user dispel the view that the overall impression produced by them is the same. (I identify the Abercrombie & Fitch front by that name for convenience. It would make no difference if the informed user were not sufficiently familiar with the Abercrombie & Fitch gilet to associate the front with that brand name.) For the avoidance of doubt I do not at all suggest that a shared design concept will always lead to a shared overall impression. It will depend in each case on the facts.

[115]The Academy and Glaisdale hoods share all the features relied on by DKH and are essentially the same apart from the white tape. Nothing in the design corpus was shown to be closely similar. In my view the Glaisdale hood would not produce on the informed user an overall impression different to that produced by the Second Design.

[116]It follows that H Young’s commercial dealings in the Glaisdale gilet infringed the First and Second Designs as Community designs.

Damages

[117]There is a point I have to decide in relation to damages. DKH claims additional damages pursuant to regulation 3 of SI 2006/1028 and/or additional damages pursuant to s.229(3) of the 1988 Act.

[118]Regulation 3 implements art.13(1) of the Directive 2004/48/EC on the enforcement of intellectual property rights (“the Enforcement Directive”). Section 229(3) must be interpreted in accordance with art.13(1), see Jodie Aysha Henderson v All Around The World Recordings Limited

[2014] EWHC 3087 (IPEC)

at [97]. In effect, in my view, DKH can claim damages on the ground of knowing infringement pursuant to art.13(1) but not on the grounds set out in s.229(3) (save in so far as such grounds are consistent with art.13(1)).

[119]Art 13(1) is as follows: “Article 13 Damages 1. Member States shall ensure that the competent judicial authorities, on application of the injured party, order the infringer who knowingly, or with reasonable grounds to know, engaged in an infringing activity, to pay the rightholder damages appropriate to the actual prejudice suffered by him/her as a result of the infringement. When the judicial authorities set the damages:(a) they shall take into account all appropriate aspects, such as the negative economic consequences, including lost profits, which the injured party has suffered, any unfair profits made by the infringer and, in appropriate cases, elements other than economic factors, such as the moral prejudice caused to the rightholder by the infringement; or

(b) as an alternative to (a), they may, in appropriate cases, set the damages as a lump sum on the basis of elements such as at least the amount of royalties or fees which would have been due if the infringer had requested authorisation to use the intellectual property right in question. When the judicial authorities set the damages: (a) they shall take into account all appropriate aspects, such as the negative economic consequences, including lost profits, which the injured party has suffered, any unfair profits made by the infringer and, in appropriate cases, elements other than economic factors, such as the moral prejudice caused to the rightholder by the infringement; or (b) as an alternative to (a), they may, in appropriate cases, set the damages as a lump sum on the basis of elements such as at least the amount of royalties or fees which would have been due if the infringer had requested authorisation to use the intellectual property right in question.

[120]Art 13(1) potentially applies to any successful claimant who has proved secondary infringement since it follows that the infringer knowingly, or with reasonable grounds to know, engaged in the infringing activity. However I do not take the view that a successful claim for secondary infringement automatically leads to bonus damages under one or more of the heads made available under art.13(1). In Henderson I discussed the circumstances in which further damages pursuant to art.13(1) may be appropriate (at [63]-[95]).

[121]In the present case DKH claims further damages on the grounds that(a) H Young was “deliberately attempting to rip-off a competitor’s successful product” and

(b) until July 2014 (well after the CMC in November 2013) H Young falsely maintained that the Glaisdale gilet had been designed independently of any basis on the Academy gilet.

[122]I have found that H Young copied parts of the Academy gilet such as to infringe DKH’s unregistered rights. Knowledge was not established until receipt of the letter before action. The late timing of H Young’s effective admission of copying was unsatisfactory and H Young says this was as a result of carrying out its own disclosure, which may not be much of an excuse, but the details of what happened have not been investigated. I have no doubt anyway that this is not a case in which damages pursuant to art.13(1) should be awarded.

Conclusion

[123]The UK unregistered design rights owned by DKH in the First and Second Designs were infringed by H Young’s importation and sale of the Glaisdale gilets from 14 days following the receipt of the letter before action of 14 February 2013. DKH’s two Community unregistered designs were, until those designs expired, infringed by the importation and marketing of the Glaisdale gilets.

[124]No damages will be awarded pursuant to art.13(1) of the Enforcement Directive.

DKH Retail Ltd v H. Young (Operations) Ltd [2014] EWHC 4034 (IPEC)

The designs in issue

The issues

UK unregistered design rights

Subsistence – lack of originality through copying one or more earlier designs

Interface – must fit

Assessment

Method or principle of construction

Subsistence – commonplace design

Assessment

Infringement

The law

Assessment

Knowledge

Community unregistered design right

Ownership of the Community designs

Features solely dictated by technical function

Assessment

Designs of interconnections

Complex product

Novelty and individual character

Article 6 Individual character

Justice of the European Union ruled:

Assessment

The law

Infringement

Damages

Conclusion

Cited in 5 later judgments