DKH Retail Ltd v H. Young (Operations) Ltd
| Jurisdiction | England & Wales |
| Judge | Judge Hacon |
| Judgment Date | 08 December 2014 |
| Neutral Citation | [2014] EWHC 4034 (IPEC) |
| Date | 08 December 2014 |
| Court | Intellectual Property Enterprise Court |
| Docket Number | Case No: CC13P04277 |
[2014] EWHC 4034 (IPEC)
IN THE HIGH COURT OF JUSTICE
CHANCERY DIVISION
INTELLECTUAL PROPERTY ENTERPRISE COURT
Royal Courts of Justice, Rolls Building
Fetter Lane, London, EC4A 1NL
His Honour Judge Hacon
Case No: CC13P04277
Iona Berkeley (instructed by Fox Williams LLP) for the Claimant
Jacqueline Reid (instructed by Nabarro LLP) for the Defendant
Hearing dates: 6–7 October 2014
Introduction
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.
Ms Berkeley appeared on behalf of DKH and Ms. Reid on behalf of H Young.
The designs in issue
The parts of the Academy gilet relied on were the same for both the UK and Community rights. Those parts were specified in paragraphs 4.1 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."
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
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
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.
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).
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.
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.
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.
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."
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.
Plainly that is not what Parliament intended. Paragraph 10 of the explanatory notes at the end of the 2014 Act says this:
" Subsection (1)...
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