"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 part of an article. It is expected that this will reduce the tendency to overstate the breath of unregistered design right and the uncertainty this creates, particularly in relation to actions before courts."
"[20] The point in dispute was whether the traditional test for originality in the copyright sense – that the author has spent sufficient time, labour and skill in the creation of the work – still applies, or whether the new test in copyright law, as defined by the Court of Justice of the European Union and expressed in terms of the work comprising the expression of the author's own intellectual creation, also now applies to s.213. Ms Bowhill submitted that a change in EU law of copyright can have no direct bearing on the UK law of unregistered designs. This was the view I took in Raft[2016] EWHC 1711 [9]. Mr Davis pointed to Whitby[2016] FSR 5 in which Arnold J assumed, without deciding, that the new test now applies (at [43]). [21] The EU test of originality comes from the CJEU's interpretation of the various copyright directives. The Court of Justice has now arguably provided a consistent and autonomous standard for originality covering all species of copyright works. It is further arguable that where art. 1(1) of Directive 2001/29/EC on the harmonisation of certain aspects of copyright and related rights in the information Society speaks of "copyright and related rights" (including the title of the Directive), this includes unregistered design rights. [22] The distinction between the old and new test for copyright originality may be only semantic, see Newspaper Licensing Agency Ltd v Meltwater Holding BV[2011] EWCA Civ 890 ;[2012] RPC 1 at [20], although more recently the Court of Appeal expressed the view that the EU test for originality is higher than the traditional English test, see SAS Institute Inc v World Programming Ltd[2013] EWCA Civ 1482 [2014] RPC per Lewison LJ at [36]-[37]."
"It is because the test he applied was that of “skill and labour”, which was the test applied by the English courts prior to Infopaq, including in Navitaire Inc v easyJet Airline Co Ltd[2004] EWHC 1725 (Ch) ,[2006] RPC 3 and Nova Productions Ltd v Mazooma Games Ltd[2006] EWHC 24 (Ch) ,[2006] RPC 14 , and not the test of “author’s own intellectual creation” laid down by the Court of Justice. As can be seen from cases such as Football Dataco and Funke Medien, these two tests are not the same, and the European test is more demanding; although Painer establishes that even a simple portrait photograph may satisfy it in an appropriate case."
"37. I will summarise the principles which are relevant to this case: (1) A defendant alleging that a design is commonplace should plead the significant features of the design as he contends them to be, the prior art relied on in which those features are said to be found and the date from which each cited item of prior art was available to designers in the relevant design field. (2) Prior art which renders a design commonplace will not be obscure. The evidential burden rests on the defendant to show that it is not. (3) A design will be commonplace if it is shown to have been current in the thinking of designers in the field in question at the time of creation of the design, see Lambretta Clothing Co Ltd v Teddy Smith (UK) Ltd [2005] R.P.C. 6 at [56]. Another way of looking at this is that a commonplace design will be one which is trite, trivial, common-or-garden, hackneyed or of the type which would excite no particular attention in those in the relevant design field, see Ocular Sciences Ltd v Aspect Vision Care Ltd [1997] R.P.C. 289, at p.429, approved in Farmers Build Ltd v Carier Bulk Materials Handling Ltd [1999] R.P.C. 13, at pp.477 and 479. A third way of characterising a commonplace design is that it will be ready to hand, not matter that has to be hunted for and found at the last minute, see Ultraframe (UK) Ltd v Eurocell Building Plastics Ltd[2005] EWCA Civ 761 ; [2005] R.P.C. 36, at [60]. (4) The design field in question is that with which a notional designer of the article in issue is familiar, see Lambretta Clothing at [45]. (5) A design made up of features which individually are commonplace is not necessarily itself commonplace. A new combination of run-of-the-mill features may not be commonplace. See Ocular Sciences at p.429, approved by the Court of Appeal in Farmers Build at p.476 and in Ultraframe at [64]. (6) If the designer of the accused article has expended sufficient skill and labour to make his design original (in the copyright sense) over a single piece of commonplace prior art, he is liable also to have succeeded in creating a design that is not rendered commonplace by that prior art."
“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.”
“There will be a limit to the exclusion of design right protection under this provision. I take the view that the shapes of the relevant parts of the connecting articles must be such that there is a degree of precision in the interrelationship between one article and the other, i.e. the designs afford some precision in the fit. For example, it would be surprising if the handle of a coffee mug were refused design protection solely because it is shaped to enable a human hand to connect to it to pick up the mug. (I use the convenient term “fit” but this does not imply that the articles must touch. Section 213(3)(b)(i) can apply to features of shape or configuration of an article which enable it to be placed around another article and so there may be a gap between them, see Dyson [2006] R.P.C. 31 at [31]–[38]).”
“Section 213(3)(b)(i) does not provide that design right cannot subsist in an article if it can be placed in, around or against another article. Rather it provides that design right cannot subsist in features of shape or configuration which enable the article to be so placed. If this is going to apply, in my view the particular aspects of shape or configuration in which design right is claimed to subsist, but as respects which the claim is going to fail because of the interface exclusion, must be specifically designed so as to enable the one article to be placed in, around or against the other. One can readily see this with an article like a spare exhaust pipe. It has to be exactly shaped and configured so as to connect up with the engine of the car and to enable the exhaust gases to be avoided into the outer air. With the Miniflat case on the other hand, the particular features which give it its unique shape or configuration (like the rectangular box-shape and the outward facing seams at the edges) are not designed so as to enable it to perform the function of containing the umbrella. Any case of the same approximate dimensions would do that, including simple cylindrical cases like many which were in evidence. The features of shape or configuration which are special to the Minifiat case are designed to perform the function of looking attractive and promoting sales of the product, not to perform the function of enabling the case to be placed around the umbrella.”
“The ordinary reasonable consumer or designer would not think, when looking at this, that they were looking at a decorated surface. I do not see why design law should see things differently: that law already sometimes seems to be a particularly abstruse branch of metaphysics. There is no need to make things worse by finding things to be surface decoration which would not ordinarily be so perceived.”
"It has the merit of being short. It has no other." … "
" … was not a prototype. This was the design being made available in real life."
"Save that it is admitted that: the Defendant was a customer of the Claimant , a user of the Macdeck System, had access to and owned articles made to the Macdeck Designs … "
"…prior to using it, you can demonstrate a product on site. It does not mean you are charging them for it. So, like, prior to us getting approval for this product on any of these sites, we had to demonstrate it. We would have to create a risk assessment, a method statement, go for pre-start, and we would have to then get the site to give us approval to erect or dismantle the product on their site. Then it would be reviewed by their production team and their safety teams and then they would give us approval to use it."… "
“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.”
"… there is a difference between an enquiry to whether the item copied forms a substantial part of the copyright work and an enquiry whether the whole design containing the element which has been copied is substantially the same design as that which enjoys design right protection. … on that test [for design right infringement] it may not be enough to copy a part, even a substantial part. Regard has to be had to the overall design which enjoys design right."
“Substantial similarity of design might well give rise to a suspicion and an allegation of copying in cases where substantial similarity was often not the result of copying but an inevitable consequence of the functional nature of the design. …Copying may be inferred from proof of access to the protected work, coupled with substantial similarity. This may lead to unfounded infringement claims in the case of functional works, which are usually bound to be substantially similar to one another. …[The court] 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.”
"(8) A mistaken belief in the law [that] an act is not an infringing act does not serve to deprive the defendant of knowledge under s.227, provided the defendant is aware of all the relevant facts. This includes the mistaken belief of the law that the claimant has no enforceable design right, inferred from the facts."
"FASET Bulletin APD02 (Revision 1) Cross-Contamination of Access Platform Decking Systems FASET recommends that under no circumstances should you mix the components of different manufacturers. If you choose to create or use a cross-contaminated system, you must be able to provide clear justifications to support your decision and ensure that all operatives involved with the edge protection system have received sufficient training and have the appropriate user instructions available to them.The Construction (Design and Management) Regulations 2015 (CDM) states that any person that amends a design or instructs another person to amend a design takes on design liability."