Frayling Furniture Ltd (Plaintiff) Premier Upholstery Ltd (Defendant) 3d Designs Ltd and Another (Third Parties) Premier Upholstery Ltd (Plaintiff) Frayling Furniture Ltd and Another (Defendants) Premier Upholstery Ltd (Plaintiff) Frayling Furniture Ltd (Defendant)
| Jurisdiction | England & Wales |
| Judgment Date | 06 November 1998 |
| Judgment citation (vLex) | [1998] EWHC J1106-1 |
| Court | Chancery Division |
| Date | 06 November 1998 |
[1998] EWHC J1106-1
IN THE HIGH COURT OF JUSTICE
CHANCERY DIVISION
Royal Courts Justice
Mr Justice Park
[Signature]
TABLE OF CONTENTS
Page No
A Overview……………………………………………………………………….. 4
B General Background……………………………………………………… 6
B1 Illustrations ………………………………………………………………………. 7
B2 Frayling and Premier ……………………………………………………………. 7
B3 Upholstered Chairs ……………………………………………………………. 7
B4 Design and Development …………………………………………………. 8
B5 Marketing ……………………………………………………………………… 9
C Design Right Generally…………………………………………………. 9
D Frayling's Sienna Range…………………………………………………. 11
E E1 The whole external appearance of the Sienna: does design right
subsist?……………………………………………………………………… 12
E2 "Commonplace" ……………………………………………………………. 16
E3 The Interface Exclusion …………………………………………………. 20
E4 Conclusion on the subsistence issue ………………………………………. 22
F Premier and the Reno…………………………………………………. 22
G G1 Does the Reno infringe Frayling's design right in the Sienna?…. 28
G2 Copying: Reno and Sienna …………………………………………………. 28
G2(1) No direct copying ……………………………………………………………. 28
G2(2) Indirect copying ……………………………………………………………. 30
G3 The Reno: was it made substantially to the Sienna design? ………… 36
G4 Conclusion on the whole external designs of the Sienna and the Reno 37
H Components of the Sienna and the Reno: alleged infringements 38
H1 No design right in commonplace items: Section 213(4) …………. 38
H2 Insufficient evidence of copying ………………………………………. 40
H3 Insufficient similarity …………………………………………………………… 40
I Frayling's allegations of infringement by Premier's post-Reno models 41
JJ1 The Third Party Proceedings……………………………………….. 46
J2 The Third Party Proceedings against 3D Designs …………………… 46
J3 The Third Party Proceedings against Mr Hewson …………………… 51
K Premier's threats action against Frayling…………………… 56
K1 The Law ……………………………………………………………………… 56
K2 The meeting and the letters ………………………………………………… 57
K2(a) The meeting of 1 December 1995 ……………………………………… 58
K2(b) The letter of 7 June 1996 ……………………………………………….. 59
K2(c) The letter of 14 June 1996 ……………………………………………….. 61
K3 The letter of 7 June 1996: Justifiable? ……………………………………… 62
K4 The letter of 7 June 1996: What relief? ……………………………………. 63
L Premier's breach of confidence action against Frayling……….. 66
A OVERVIEW
Design right is a species of unregistered intellectual property created by the Patents Designs and Copyright Act 1988. (References in this judgmentto sections are to sections of that Act) . This case is about design right in armchairs. Settees are also involved, but the case was presented by reference to chairs. Everyone agrees that the result for settees will be the same as the result for chairs. For the most part in this judgment I shall refer only to chairs.
The Plaintiff is Frayling Furniture Limited, a furniture manufacturer. It developed a chair which it called the Sienna. It claims design right in the whole external appearance of the chair. It also claims design rights in various component parts of the chair.
The first defendant is Premier Upholstery Limited, another furniture manufacturer. In unusual circumstances which I will describe later it came to manufacture a chair called the Reno. Frayling contends that Premier, by manufacturing the Reno, infringed its (Frayling's) design rights in the whole external appearance of the Sienna and in component parts of it.
As well as making the Reno, Premier developed and manufactured four other ranges of chairs, called the Rialto, the Suffolk, the Rimini and the Novella. Frayling contends that these chairs infringed its design rights in the whole external appearance of the Sienna and in certain component parts of it.
Premier had been granted a licence to manufacture the Reno by the first third party, 3D Designs Ltd. 3D Designs was the company of the second third party, Mr. Hewson. Premier says that, if it is liable to pay damages (or to account for profits) to Frayling on account of the Reno, it is entitled to recover the damages from either or both of 3D Designs and Mr Hewson.
At one stage when Frayling was investigating whether Premier was infringing its design rights, its solicitors wrote two letters to a customer of Frayling, a mail order company called Freemans Plc. Premier was also in contact with Freemans. The letters from Frayling's solicitors concerned the design rights which Frayling claimed in the Sienna and which it considered might be being infringed by Premier. Premier alleges that the letters were threats and unlawful by virtue of section 253 of the 1988 Act. It makes a similar allegation about statements made at a meeting between two directors of Frayling and representatives of Freemans. Premier sues Frayling and its solicitors for relief in respect of the alleged threats.
The final matter also involves Freemans. Premier wrote a business letter to Freemans, a copy of which was somehow leaked to Frayling. Premier says that the letter was confidential and Frayling was not entitled to make improper use of it. Premier also says that Frayling should have told Premier how it got the letter, but did not do so. Premier started a separate action about this, and claimed various forms of relief.
So a number of questions arise. I set them out now, and I state, without reasons at this stage, what my answers to them are.
Is Frayling entitled to design right in the whole external design of the Sienna?
Answer: Yes. Frayling wins this argument.
Is Frayling entitled to design rights in component parts of the Sienna?
Answer: No. Premier wins this argument.
Did Premier, by manufacturing the Reno, infringe Frayling's design right in the whole external design of the Sienna?
Answer: Yes. Frayling wins this argument.
Did Premier, by manufacturing the Rialto, the Suffolk, the Rimini and the Novella, infringe Frayling's design right in the whole external design of the Sienna?
Answer: No. Premier wins this argument.
(Before listing the remaining questions I mention that the questions of whether Premier, by manufacturing the Reno, the Rialto, the Suffolk, the Rimini and the Novella, infringed Frayling's design rights in component parts of the Sienna do not arise. Because of my answer to question 2 Frayling did not have any such design rights. I add that, even if it did have such rights, I would have held that in nearly all cases there were no infringements) .
Given that, by reason of my answer to question 3, Premier is liable to Frayling for infringement of the design right in the whole external design of the Sienna, is Premier entitled to be reimbursed by (a) 3D Designs, (b) Mr Hewson?
Answer: (a) Yes. (b) No. Premier wins against 3D Designs and loses against Mr Hewson.
Did Frayling, in a meeting with and in letters to Freeman, make unlawful threats which are actionable by Premier?
Answer: Yes as regards one letter. However, I decline to give any relief to Premier in respect of this matter.
Was Premier justified in bringing its action against Frayling about the leak to Frayling of the (allegedly) confidential business letter from Premier to Freemans?
Answer: Yes in one respect. No formal relief is appropriate now, but I expect further arguments about costs attributable to this "breach of confidence action".
B GENERAL BACKGROUND
I need to sketch in a certain amount of non-controversial background material before turning in subsequent parts of this judgment to the critical facts and the disputed issues.
B1 Illustrations. A number of illustrations are attached to this judgment. I refer to them occasionally as the judgment progresses, and a reader will find it convenient to look at them from time to time. Illustrations 1 and 2 are photographs of the Sienna and the Reno.
B2 Frayling and Premier. Frayling is a privately owned company with quite a substantial business. It has been engaged in the furniture manufacturing industry for some 50 years. Its registered office is in Stoke-on-Trent, and I imagine, but am not quite sure, that its factory and other business premises are in the same area.
Premier is an indirect subsidiary of Hillsdown Holdings Ltd, a quoted company. There is a sub-group within the Hillsdown group which is engaged in furniture manufacturing. The sub-group is known as the Walker & Homer group, and Premier is one of the companies in it. Premier is one of the largest manufacturers of upholstered furniture in the country. Its premises are in or around Cardiff.
B3. Upholstered chairs.
The general public tends to see only the outside of upholstered chairs. Within the chair there is a frame, usually constructed from lengths of wood or pieces of board. The frame has to be of the right general size and shape for the intended external design of the chair which the public sees. The frame provides the strength of the chair, so that when people sit down heavily on the seat or the arms, or lean on the back, the chair does not collapse. Illustration 3 contains photographs of two frames of chairs involved in this case. The frame also provides the core structure around which the upholsterer fits padded cushions or pieces of foam. They provide the comfort of the chair and create the finer details of the final shape. The chair naturally has an external cover. Most covers are in soft fabric of one sort or another, but leather covers have grown in popularity. This case is about leather covered chairs. Some manufacturers (including Frayling) tend to sew together a complete cover and then...
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