United Kingdom Unregistered Design Right - introduction and subject matter

Introduction

Part III of the Copyright, Designs and Patents Act 1988 introduced an important new form of intellectual property – unregistered design right – to replace copyright as the basic vehicle for the protection of functional designs (although it also protects designs that have eye-appeal). This new right has much in common with copyright but offers much less protection. Indeed, it appears to offer protection only when it is not needed: it is a classic fair weather umbrella.

This is because of the peculiar circumstances in which the right was created. It must always be borne in mind that it was designed to deal with a particular set of problems in the motor industry¹, which is characterised by the fact that motor vehicles are almost the only article for which owners buy spare parts, at least in any significant quantity. The legislation is designed to rein in the protection given to designs for components, the rights in which will usually be owned by the vehicle manufacturers (whether because they created them or because they have obtained or extracted assignments from the component manufacturers who designed them) and to open the market to independent component manufacturers. This is done by a combination of short protection, exceptions and licensing of right provisions, and if the result does not suit manufacturers of articles other than replacement parts for motor vehicles that is their tough luck.

Section 51 imposes severe limitations on the copyright protection of industrial designs. Designs will be protected not by copyright but by the new unregistered design right. If they have the requisite novelty and individual character they may also qualify for protection under the Registered Designs Act 1949, as amended.

Subject matter

Design right subsists in original designs, just as copyright does in original works. There is no need for there to be a design drawing or other document, as with copyright (though the design does have to be fixed in some form).² As with other areas of intellectual property, it is the design itself as an abstraction that receives protection: this means that the articles to which the design is applied are not material to consideration of the design’s legal protection.

Definition of design

Section 213(2) of the 1988 Act defines ‘design’ to mean the design of any aspect of the shape or configuration of the whole or part of an article. This means the overall appearance or form of an article, or any part of it. (Registered designs, by contrast, are largely concerned with particular features of a design). Surface decoration is not a matter for design right: it will be protected, perhaps, by copyright.³

The Intellectual Property Bill (introduced into Parliament in 2013) will amend this definition by removing the words ‘any aspect of’. The government apprehends that design right owners tend to overstate the extent of their protection, which on the wording of the definition covers the design of trivial elements as well as important ones. The ramifications are discussed on the NIPC blog (28 May 2013). It will also amend section 51 of the Copyright, Designs and Patents Act.

‘Article’

Design right only subsists if the design is of an article; it must be a design which the designer intended to apply to articles. The Act does not contain a definition of ‘article’. Although the word suggests something that is three-dimensional, this is not a requirement and in Lambretta Clothing Co Ltd v Teddy Smith (UK) Ltd⁴ the court suggested that a doily could be an article.

The cases also tell us that mobile phone cases⁵, contact lenses⁶, and kitchen units (but not the complete fitted kitchen)⁷ are articles.

In Ocular Sciences Ltd v Aspect Vision Care Ltd⁸, Laddie J observed: ‘The proprietor can choose to assert design right in the whole or any part of his product. If the right is said to reside in the design of a teapot, this can mean that it resides in the design of the whole pot, or in a part such as the spout, the handle or the lid. This means that the proprietor can trim his design right claim to most closely match what he believes the defendants have taken.’ Design right may therefore protect component parts that together make up an article, either individually as articles in their own right or collectively. See Baby Dan AS v Brevi SRL and Trend Europa.⁹

‘Any aspect’

This means (according to Jacob J in A Fulton Co Ltd v Totes Isomer UK Ltd¹⁰) that what is protected must be discernible or recognisable, which implies that it must be visible.

‘Shape or configuration’

The first of these words suggests external form, while the second means ‘the relative arrangement of the various parts of an article to one another’: Mackie Designs Inc v Behringer Specialised Studio Equipment (UK) Ltd¹¹. In Lambretta Clothing Co Ltd v Teddy Smith (UK) Ltd¹², the Chancery Division held that there was no design right in the design of a garment as the claimant had failed to demonstrate originality in the shape or configuration of the article, only in its surface decoration which was a matter for copyright, if anything. The case concerned a design for a ‘tracktop’, a sort of zipped jacket of retro appearance, and in particular the colour scheme, or ‘colourway’, applied to it. At first instance, Etherton J held that that there was no design right in the design, and that copyright, although it subsisted, was not infringed because of section 51 of the Copyright, Designs and Patents Act 1988.

The claims to protection referred to the colourway, as the garment itself was based on pre-existing designs and lacked originality. The colourway comprised a navy blue body and red arms and neck, with two white stripes running down the arms and the word ‘Lambretta’ in white on the front and (in larger lettering) the back.

Lambretta appealed against the judgment, and Teddy Smith cross-appealed against the finding that it had copied the design, also arguing that the colour scheme was commonplace.

Jacob LJ gave the leading judgment, with which Sedley J agreed, Mance LJ dissenting on the copyright point. There was no UDR in the colourway, which was neither shape nor configuration, but was surface decoration and therefore excluded from protection. The words ‘shape’ and ‘configuration’ also appeared in the 1949 and 1988 versions of the Registered Designs Act 1949 and Jacob LJ considered that they meant the same there as in the UDR provisions. Moreover, in registered designs law the two expressions were generally taken to mean the same thing, and colouring had never been considered to be either (though because features of pattern and ornament would be registrable, the need to characterise colouring as shape or configuration did not arise under the 1949 Act, reinforcing the assumption that Parliament had deliberately set out to exclude UDR in such matters).

Jacob LJ was unimpressed by arguments that surface decoration was necessarily not three-dimensional, which the judge had accepted. Even ink, dye or a coat of paint has three dimensions, and carvings in wood were surface decoration¹³. Whether colour was surface decoration could not depend on how deeply it penetrated the article to which it was applied.

The argument that the coloured components of the garment were configured together also failed to make an impression (whether that would have been mere surface decoration or not) on Jacob LJ. He agreed that the components were indeed configured so about produce the complete article – he could hardly disagree with that – but held that the colour of the components had nothing to do with it. Although in Mackie Designs Inc v Behringer Specialised Studio Equipment (UK) Ltd¹⁴ Pumphrey J had spoken of ‘the relative arrangement of parts or elements’ this was not wide enough to cover ‘merely colouring a pre-existing article’. There was no design right in the garment.

As for the drawing in which it was argued copyright subsisted, copyright did indeed subsist but section 51 applied and there was no infringement. That provision excludes making an article to a design from the scope of infringement of copyright in a design document embodying that design, unless the article depicted is itself an artistic work, such a sculpture. Here the drawing was a design document, and the blocks of colour had to be considered in the shape of the components to which they were applied. Any doubt about whether this was the correct approach was dispelled (for Jacob LJ) by the consideration that the alternative view would have resulted in longer protection being secured just by colouring an existing garment than by designing a new one. Mance J preferred the proposition that copyright subsisted in the design documents and the question was whether a substantial part of he design had been copied. The section 51 definition of ‘design’ - one of three definitions of the expression in the 1988 Act – did not include surface decoration, so if surface decoration was a substantial part of the artistic copyright work that provision would give no defence against an infringement claim.

The argument, given some currency in the Wilkinson case, that Parliament could not have intended to leave a gap between UDR and copyright, was rejected by Jacob J. The famous dictum of Peterson J in University of London Press Ltd v London Tutorial Press Ltd¹⁵ – ‘what is worth copying is prima facie worth protecting’ – did not mean that the ‘one or other’ approach was correct.

As for the points raised by Teddy Smith on the cross-appeal, the design of the colourways was indeed commonplace in the design field in question. A broad approach to identifying the relevant design field was needed as such garments were multi-purpose, so it was wrong to consider the field to comprise only casual clothing for young men and not sportswear, as the judge had done. The important thing was to consider the range of designs with which the designer would have been familiar. Directive 87/54/EEC had used the expression in relation to the semiconductor industry, not a particular part of it. And in Scholes Windows Ltd v Magnet Ltd¹⁶ it was windows, not just u-PVC windows, that was the relevant design area.

There was doubt that the trial judge had been correct to hold that Teddy Smith had copied the design, and had it been necessary a re-trial would have been ordered. An inference of copying had arisen, and the defendant had failed to rebut it. However, the defendant/respondent had prevailed in the appeal so no re-trial was necessary.

Functional and aesthetic designs

There is no requirement in Part III for eye-appeal. Design right is intended to cover designs which are functional rather than aesthetically pleasing; artistic designs are not disqualified from design right protection but will enjoy 25 years’ protection if they are registered under the Registered Designs Act 1949 as amended, so there is a strong incentive not to rely on design right if registration is available.

The point that design right applies irrespective of how functional a design might be is reinforced by the fact that the definition of a design specifically includes the internal as well as the external shape or configuration of an article. The design, when applied to an article, need not even be visible to the naked eye.

Requirements for Protection

Originality

Design right only subsists in original designs. They have to be original, but they can be simple: a basic geometric shape can be protected¹⁷.

The basic test of originality is that the design must be independent in the sense that it is not a copy although it need not necessarily be novel. This is the meaning of ‘original’ found in copyright law. In C & H Engineering v F Klucznik & Sons Ltd¹⁸(the Pig Fenders case) Aldous J held that the same test as imposed in copyright law would be appropriate: that the design was not copied but the independent work of the designer. A design may be original in that is it is not copied, but may not be novel for the purposes of the Registered Designs Act because it has been previously published. In Farmer Build Ltd v Carier Bulk Materials Ltd and others¹⁹ the Court of Appeal endorsed the application of the copyright meaning of the word, Mummery LJ adding that section 213(4), which tells us that a design is not original if it is commonplace in the design field in question, creates a two-stage test: is the design original, and then is it commonplace? However, a design may, it seems, be original but also commonplace and therefore denied protection: see Scholes Windows Ltd v Magnet Ltd²⁰.

What sort of differences are needed to make something original? In Interlego v Tyco Industries²¹ the Privy Council held that a design was not original where the only original input of the designer was to make modifications to the design drawings which were indistinguishable in the article made to the design. Amongst other changes, the radii on the corners of the bricks were altered. This did not start a new term of protection running. In Ocular Sciences Ltd v Aspect Vision Care Ltd²²Laddie J held that although designs (in suit, for contact lenses) which looked the same to the naked eye could enjoy design right protection, merely changing the scale of an existing design would not create a fresh right. The commonplace exclusion applies to designs that are ‘trite, trivial, common-or-garden, hackneyed or of the type that would excite no particular attention in those in the relevant art.’ However, he did not think it right to try to advance a definition of the term.

In Spraymiser Limited v. Wightway Marketing Limited²³ the defendant had purchased in the United States a wooden mannequin which could be reconfigured to form different items of furniture. The defendant described it to the claimant in the UK, suggesting that the claimant might develop something similar which the defendant would advertise in its mail order catalogue. Now there was some dispute about whether the defendant had shown the device to the claimant.

The claimant subsequently developed a similar design which was marketed by the defendant for several years until 1997 when the defendant stopped ordering the product from the claimant and found another supplier, using the claimant’s product as a template. The claimant sued for infringement of unregistered design rights and for breach of contract.

On the evidence, the Court decided that the claimant had never had access to the American model. Similarities between the two devices were inevitable because they were both representations of the human form, but this did not preclude the possibility that the claimant’s work was original.

Commonplace designs

Sub-section (4) adds the further limitation that a design not be commonplace, thus excluding designs which, while they are not copies, are no more than an expression of what is widely known in the design field in question. In the Pig Fenders case the judge described the ‘commonplace’ provision as imposing a requirement akin to novelty. He found that certain features of the pig fenders in suit were commonplace, so that although they were common to the plaintiff’s and the defendant’s designs, there was no infringement. But in Amoena v Trulife²⁴ the court considered novelty unnecessary. Consideration of the prior art may nevertheless be relevant, as in Lone Star Toys Ltd v JM Enterprises of Wetherby Ltd.²⁵

In Ocular Sciences, Laddie J said that a design would be commonplace if it was ‘trite, trivial, common-or-garden, hackneyed, or of the type which would excite no peculiar attention in those in the relevant art.’ In the key case, Farmer Build Ltd v Carier Bulk Materials Ltd and others²⁶, the Court of Appeal explained the test for this.

In that case, the plaintiff manufactured and marketed slurry separators. One of its products was causing problems, and it agreed with the defendant that a new machine would be designed on the basis of two of the plaintiff’s old designs and improving on them. The relationship broke down: the defendant subsequently started to produce its own slurry separators which were externally different from those it had designed for the plaintiff but internally virtually identical.

The defendant claimed that the individual parts of the machines, and the machines themselves, were commonplace in the design field at the time of their creation. The court considered that the correct approach was to compare the design of the article in which UDR is claimed with the design of other articles in the same field, including the alleged infringing one. The material time for this exercise is when the design is created. A design copied from the design of an earlier article will not be original, and it is not necessary to consider whether it is commonplace or not.

Whether it is commonplace is determined by ascertaining the degree of similarity to the design of similar, independent articles in the same design field.²⁷ This is to be done objectively, in the light of the evidence (including expert evidence) but is a question of fact and degree for the court. If there are aspects of the plaintiff’s design not found in other designs in the field, except the defendant’s, the court can conclude that the design was not commonplace. In Scholes the horn design had been used on windows for many years and was therefore commonplace. In the case of a decorative design where there is greater design freedom, as was the case there, the Farmer Build guidelines will be less help.

The guidelines were applied by the High Court (Rattee J) in Round Imports v PML Redfearn Ltd.²⁸ This concerned UDR in a tall-necked bottle designed for the plaintiff for its Red Eye beverage. The design of the Red Eye bottle was original in that it was not a copy of another design: it was however very similar to a Miller bottle which the plaintiffs had provided to the defendant as a model, and although there were minor variations in shape and dimension they were not in the judge’s view sufficient to make the bottle significantly different from the Miller bottle or any other tall-necked bottle available at the time. Glass designers have always considered small differences sufficient, but it seems that the law differs from their view and their designs will now be open to copying. However, that case was decided on other grounds.

The guidelines were also applied in the Jo-Y-Jo²⁹ case, where expert evidence showed that the cardigan designs in question were ‘classic’. Embellishing the garments with embroidery and edging did not prevent the designs being commonplace. In Scholes, the Court of Appeal decided that the relevant design field when considering replacement Victorian windows was Victorian windows as a whole, so the design in suit was commonplace when compared with earlier windows. In Fulton, a claim to unregistered design right in the handle and case of a folding umbrella was upheld: to enable functional designs to enjoy any protection, the judge (Park J) said, a narrow interpretation of what is commonplace was needed. Merely because references to two designs of close similarity could be shown was insufficient. Very minor changes of line or angle can have a significant effect on a design (as happened in Scholes).

In Spraymiser Ltd. VV Wrightway Marketing Ltd.³⁰ the judge took the view that the field was extremely small, consisting as it did of only two designs, namely the American one and the claimant’s. There were sufficient differences between them that the claimant’s design was not commonplace within the field. Had there been a greater number of candidates, more differences may (it is submitted) have been needed.

Originality may be found in a design which combines features which, individually, are commonplace but together are not: Ultraframe UK Ltd v Clayton and others.³¹

What is commonplace is a matter to be decided only by reference to designs known to designers in the UK. The Intellectual Property Bill will amend the definition to limit the test for whether a design is commonplace to ‘qualifying countries’ - a concept examined in the following section. The rationale for this is that it will put the test for originality on the same footing as that for novelty in the Registered Designs Act, which extends the concept to the whole of the EEA. Since the Court of Appeal went out of its way in Farmer to make clear that novelty and originality are very different things and that the concept of novelty had no relevance to unregistered design right it is far from obvious why the definition of ‘commonplace’ needs to be brought in line with that of ‘novel’.

Exceptions to or exclusions from Design Right

Design right does not subsist in certain situations³². Some of these designs are also excluded from the definition of ‘design’ in the 1949 Act, as amended, so they cannot be registered. Here, the legislation clearly looks at individual features of the design. The approach taken by the courts is to remove excluded features first, then apply the Farmer Build test for originality.³³

Method or Principle of Construction

The definition of design excludes the underlying principles or ideas behind the design. If they are to be protected at all, they are properly matters for the patent system. The exclusion will be construed narrowly, and it will only apply where the technical purpose cannot be achieved in any other way³⁴. ‘Method of construction’ includes the designer’s choice of materials³⁵, the positioning of the fuel tank on a lawn mower³⁶, the mesh of a bait bag used in carp fishing³⁷, the rubber liner forming part of a slurry separator³⁸, and the stitching on a mobile phone case³⁹.

‘Must Fit’ and ‘Must Match’

The ‘must fit’ and ‘must match’ exceptions are intended to prevent design right conferring a monopoly and thereby to preserve competition. They permit copying where design constraints compel it. Note that these are convenient nick-names for these exceptions to protection: they do not appear in the Act, and are therefore best kept between inverted commas when they are used.

‘Must Fit’

Design right does not subsist in those parts of the design of an article which enable⁴⁰ an article to fit or connect to another so that either article may perform its intended function. The article in question may be part of the human body⁴¹ but the fit must be precise⁴².

This exception is particularly intended to withdraw protection from spare parts which must fit in to existing equipment, though it also extends to complete articles⁴³, including some species of design that will be little more than one big must-fit feature (like a mobile phone case, which besides fitting the phone has to fit the hand, as does the handle of a vacuum cleaner⁴⁴): it is particularly directed at those which offer interfaces enabling them to be fitted together.⁴⁵ In Fulton, however, a case for a folding umbrella was not a must-fit design:

It would in my view be unacceptable to construe the provision as meaning that any article which is shaped so as to cover or contain another article cannot qualify for design right.

In the Parker case (which on the face of it seems hard to reconcile with this view) there was infringement of features in the design of which there was design freedom, so the ‘must-fit’ argument was not conclusive.

Notice that it is not the design for the spare part itself which is excluded from protection, but only the design of those features of shape or configuration of the article which enable it to fit. A competitor who wishes to produce an article will still be prevented from copying the free-standing parts of the design but will be able to copy the connecting or ‘must fit’ features. These may be applied to the second design to produce a competing article which will fit and function.

In the Baby Dan case, the deputy judge, David Young QC, gave a purposive construction to the must-fit exception. The claimant could rely on design right relating to various parts of a larger article, so the must fit exception would not exclude from protection the shape or configuration of the parts necessary to enable them to be assembled. This is hard to reconcile with the approach in Critchley, and commentators suggest that Critchley is to be preferred. A similar approach, recognising design right in component parts and restricting the must fit exception, informs the decision of Park J in Frayling Furniture v Premier Upholstery Ltd.⁴⁶

In Novum (Overseas) Ltd v Iceland Foods plc and Austria Haustechnik⁴⁷, the High Court considered the effect of the so-called must fit exception to design right. The defendants had made and imported freezer cabinets that reproduced the claimant’s design (drawings of which the first defendant had obtained under the pretence that they were needed for shop layout design purposes: infringement of copyright by reproducing the drawings was admitted).

The first defendant argued that it was co-owner of the design, having had some input into the design work. The judge held that it had not done sufficient to produce this result, and even if it had dealings in a jointly owned design needed the consent of all owners.

Though freezer cabinets are not the most exciting pieces of design work around, the judge considered that a combination of commonplace features could attract unregistered design right protection. The model in suit was quite different in overall appearance to prior designs that had been put in evidence. The defendants’ freezer was a substantial reproduction of the design, and notwithstanding the evidence the judge held that it had been copied and therefore infringed design right. However, dividers and gaskets which formed part of the cabinet were commonplace and also were covered by the must fit exception.

The second defendant escaped an award of additional damages as it had been unaware of unregistered design right and had trued to produce a design that was not a copy.

‘Must Match’

The ‘must match’ exception excludes from protection features which are dependent upon the appearance of another article of which the article is intended by the designer to form an integral part. It is intended to apply where there is a need for articles which are part of a single object to match the appearance of the rest of that object as a whole – it does not apply to pieces from a set of cutlery.

The exception is intended to cover the situation where a part is needed to restore the aesthetic appearance of an article. In such a case certain features of the design may be covered by the ‘must fit’ exception. The other features of the design are not free-standing since the designer must reproduce the shape of the item being replaced if their article is going to serve as a viable replacement. So, wherever, aesthetically, there is no design freedom, design right will not arise.

In Dyson v Qualtex Mann J considered the old House of Lords decision in Ford Motor Company’s Design Applications⁴⁸ in which the wording of the relevant provision (in the old Registered Designs Act) was identical. In that case, designs for body panels and the like, the appearance of which was dependent on that of the complete vehicle, were excluded from protection as ‘must match’ designs, while steering wheels, road wheels, seats and seat covers were not dependent in that way and their designs were not excluded.

The need for the features of the design to match another must be considered at the moment the design is created. So if the shape or design of an article is not dependent on anything else at the time the design is made, design right will subsist. It will be immaterial that at some future stage the use to which the article is put creates a must match situation.

Surface Decoration

Surface decoration is excluded from the scope of design right, again because the right is concerned with the overall form of an article. It may be registered (registration being concerned with features of an article) and may also be protected by copyright. See Designers Guild Ltd v Russell Williams (Textiles) Ltd.⁴⁹ Surface decoration means more than a design printed or painted, or perhaps etched, onto an article – it includes a ‘v groove’ in a kitchen unit⁵⁰ although with such elements it must be a matter of degree – how deep must a groove be before it ceases to be surface decoration? In Lambretta v Teddy Smith⁵¹ the argument that the design was not surface decoration but the configuration of different-coloured pieces of the garment was rejected.

Surface decoration is specifically excluded from the definition of a design for the purposes of copyright, so section 51 of the Copyright, Designs and Patents Act 1988 does not restrict copyright protection. The design right exception is not restricted to situations where dual protection actually exists.

Qualification

A design may qualify for design right protection by reference to the designer, commissioner or employer⁵², or to first marketing in the European Union⁵³. If the designer is a qualifying person the design will be protected. If the designer is (as will often be the case) employed, or has been commissioned to make the design, the question is whether the employer or commissioner qualifies.

A citizen, subject or habitual resident of the UK, or another EU Member State, is a qualifying person. So too are citizens, subjects or habitual residents of countries designated under section 256 as providing adequate protection for British designs: no countries have been so designated.

A body corporate qualifies if it is organised under the laws of the UK or another qualifying country and has a real business presence – more than just a mailbox – there.

If the design is not protected under any of these rules, it may be protected if it was first marketed⁵⁴ in the UK or elsewhere in the EEC. This may be the only way for designs originating in, for example, Japan or the United States to gain protection, but it does not appear that there has been a flood of product launches in Europe just to get the benefit of the (limited) protection of UDR.

The benefits of the legislation will be extended to foreign designers on a reciprocal basis. Countries will only be designated under the legislation if they give UK designers the same rights as UK law will give their designers.

Fixation

There is no design right in a design until it has been fixed in a material form. This could happen either by the design being recorded in a design document or an article being made to the design.

A design document is defined as any record of a design whether in the form of a drawing, a written description, a photograph, data stored in the computer, or otherwise.

If the design qualifies for protection by reference to its first marketing then design right will only arise when it is first marketed.

Duration

Protection begins when the design is first recorded in a material form or when articles made to the design are first made available for sale⁵⁵.

It will generally expire ten years after the end of the year in which articles to the design are first made available for sale or hire. To avoid perpetual protection for unmarketed designs section 216(1)(a) provides for an overall period of fifteen years from the end of the calendar year in which the design is first recorded.

1It is interesting to note that the case law on unregistered design right seems most frequently to have involved agricultural equipment, although the lack of litigation on vehicle parts perhaps indicates that the legislature has succeeded in its aims.

2In Mayfair Brassware Ltd v Aqualine International Ltd [1997] EWCA Civ 2560, [1998] FSR 138 Laddie J criticised the lack of evidence of originality in the form of drawings, so while they are not necessary they certainly have their uses. He refused an interim injunction and penalised the claimants in costs.

3See Designers’ Guild Ltd v Russell Williams (Textiles) Ltd [2000] 1 WLR 2416, [2000] UKHL 58, [2001] 1 All ER 700, [2001] ECDR 10, [2001] FSR 11 and Jo-Y-Jo Ltd v Matalan Retail Ltd [2000] ECDR 178 (Ch D).

4[2003] EWHC 1204, upheld in part [2004] EWCA Civ 886.

5Parker v Tidball [1997] FSR 680.

6Ocular Sciences Ltd v Aspect Vision Care Ltd [1997] RPC 289, [1996] EWHC Patents.

7Mark Wilkinson Furniture v Woodcraft Designs Radcliffe Ltd [1998] FSR 63.

8Supra.

9[1998] EWHC 291 (Pat), [1999] FSR 377 , Ch D.

10[2004] RPC 301 at para 31.

11[1999] EWHC Ch 252, [1999] RPC 717.

12[2003] EWHC 1204, upheld in part [2004] EWCA Civ 886.

13 Mark Wilkinson Furniture Ltd v Woodcraft Designs (Radcliffe) Ltd [1988] FSR 63.

14 [1999] EWHC Ch 252, [1999] RPC 717.

15 [1916] 2 Ch 601, 610.

16 [2002] FSR 172.[2001] EWCA Civ 532, [2002] ECDR 20, [2002] FSR 10

17Sales v Stromberg [2006] FSR 89.

18[1992] FSR 427.

19[2000] ECDR 42, [1999] RPC461 (CA)The Times, 23 December 1998 (Ch D).

20 [2001] EWCA Civ 532, [2002] FSR 10.

21[1989] 1 AC 217, [1988] 3 All ER 949, [1988] RPC 343.

22 [1997] RPC 289

23 (20 December 1999).

24[1996] IPD 19006.

25 [1996] FSR 857

26[2000] ECDR 42, [1999] RPC461 (CA)The Times, 23 December 1998 (Ch D).

27 In Scholes Windows v Magnet Ltd the field was windows, not uPVC windows, so the earlier use of a similar design on Victorian windows counted against the modern design being protected.

2831 March 1999, upheld sub nom Round Imports v Rexam Glass Barnsley Ltd by the Court of Appeal, 5 October 2000.

29

30High Court (Mr P Leaver QC, sitting as a Deputy Judge, 20 December 1999) [2000] ECDR 349.

31[2003] EWHC 242 (Ch) (14 February 2003), [2003] RPC 435. Ultraframe have been involved in a number of cases: see also Error: Reference source not found below.

32Section 213(2).

33Ultraframe v Clayton, supra, note 31.

34Landor and Hawa International Ltd v Azure Designs Ltd [2006] EWCA Civ 1285 (28 July 2006), [2007] FSR 181.

35Christopher Tasker’s Design Right References [2001] RPC 39.

36Rolawn Ltd v Turfmech Machinery Ltd [2008] RPC 663.

37Bailey v Haynes [2006] EWPCC 5 (02 October 2006).

38Farmer Build.

39Parker v Tidball, supra, note 5. The court expressed no view about whether it would make a difference if the stitching were ornamental rather than structural, though it seems likely that it would not be a method or principle of construction in that case – but it might then be unprotected surface decoration.

40 The meaning of this word was explored by Park J in in A Fulton Co Ltd v Grant Barnett & Co [2001] R.P.C. 16, [2000] All ER (D) 1270.

41 In Ocular Sciences Ltd v Aspect Vision Care Ltd [1997] RPC 289, [1996] EWHC Patents (supra., page Error: Reference source not found), Laddie J considered that the ‘article’ which the article in the design had to fit could be the human eye. The radius on the rear face of a contact lens was therefore a must fit feature.

42Amoena (UK) Ltd v Trulife Ltd [1996] IPD 19006, [1995] EIPR D-346.

43 See Philip Parker v Stephen Tidball [1997] FSR 680, Ch D.

44Dyson v Qualtex.

45 Electronic Techniques (Anglia) Ltd v Critcheley Components Ltd [1997] FSR401, Ch D, and contrast Baby Dan AS v Brevi SRL [1999] FSR 377 (infra).

46 (1999) 22(5) I.P.D. 22051.

47 [2002] EWHC 53.

48[1995] RPC 167.

49Note 6, supra.

50Mark Wilkinson Furniture Ltd v Woodcraft Designs (Radcliffe) Ltd [1998] FSR 63, Ch D.

51Supra., note 79.

52Section 219.

53Section 220.

54The definition of ‘first publication’ in Part I of the Act (relating to copyright works) is generous, deeming any publication within 30 days of actual first publication to be first publication. No such nonsense is provided for in Part III, so first marketing in the EC must be real first marketing.

55Section 216.