A. Fulton Company Ltd v Totes Isotoner (UK) Ltd
|England & Wales
|Lord Justice Jacob,Lord Justice Kennedy
|04 November 2003
| EWCA Civ 1514
|Case No: A3/2202/2512
|Court of Appeal (Civil Division)
|04 November 2003
 EWCA Civ 1514
IN THE SUPREME COURT OF JUDICATURE
COURT OF APPEAL (CIVIL DIVISION)
ON APPEAL FROM PATENTS COUNTY COURT
(HIS HONOUR JUDGE FYSH QC)
Lord Phillips Of Worth Matravers Mr
Lord Justice Kennedy and
Lord Justice Jacob
Case No: A3/2202/2512
Mr S Thorley QC and Mr T Hinchliffe (instructed by Messrs Denton Wilde Sapte)
for the Appellant
Mr R Arnold QC and Mr B Brandreth (instructed by Messrs Gouldens)
for the Respondent
This appeal is from part of a judgment of HHJ Fysh sitting in the Patents County Court. The claimant ("Fultons") sued Totes Istoner (UK) Ltd. ("Totes") for infringement of registered design and unregistered design in respect of 5 versions (called "A" to "E") of cloth cases for portable folding umbrellas. The Judge held that the registered design was valid and infringed by A and B but not by C-E. From that there is no appeal or cross-appeal. The Judge went on to hold that all 5 types infringed unregistered design right. Totes appeal only one point of law in respect of types C-E.
The facts are set out clearly in the judgment. They are no longer in dispute. So I can summarise. All the cases are for umbrellas which fold into an oblong shape. The cases are correspondingly oblong. In each instance the umbrella is to be pushed into the end of the case. The differences between the variants all lie in the "cuff" – the open end into which umbrella is pushed. For present purposes there is no difference between types A and B on the one hand and types C-E on the other. So I will call them A and C.
Mr Fulton's design drawing is the following:
The drawing is not to scale but conveys all you need to know. The article is an open flat box, 21x5x3 cm in overall dimensions. The "cuff" is about 4 cm long. There is a slit in one corner of the cuff – to make insertion of the umbrella easy. The stitching along the sides of the case give it a sharp box-like appearance – without it the case would be less defined visually. The cases made and sold by Fulton ("Miniflat cases") are made to this design.
The first Totes cases (i.e. A and B) were straight copies of the Fulton cases. They too had a slit and stitching. When Totes learned of the registered design they hurriedly changed their cases to types C-E. The change was to remove one short side of the cuff altogether. This is an agreed picture of C:
It is a copy of the entire Fulton article, minus the cut-out —of nearly the whole thing. And all of it comes from copying.
It is not disputed that Fultons own unregistered design right in the whole, slit, design. That is what is shown in the design drawing and was the design of the first article made by Fultons. For present purposes it does not matter whether one goes by the drawing or the article, for s.213(6) of the Copyright Designs and Patents Act 1988 ("the Act") says:
"Design right does not subsist unless and until the design has been recorded in a design document or an article made to the design."
Fultons claimed infringement on two bases – that C was made by copying the design of the whole article and was substantially to that design or that C was made by copying the design of part of the whole article and was an exact reproduction of that part. The claim failed on the former basis (from which there is no cross-appeal) but succeeded on the latter. It is that latter basis which is under challenge in this appeal
I turn to set out the key provisions of s. 213 dealing with subsistence of unregistered design right and s.226 dealing with infringement:
"(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.
(3) Design right does not subsist in –
(a) a method or principle of construction,
(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 its function, or
(ii) are dependent upon the appearance of another article of which the article is intended by the designer to form an integral part, or
(c) surface decoration."
(4) A design is not 'original' for the purposes of this Part if it is commonplace in the design field in question at the time of its creation.
(5) Design right subsists in a design only if the design qualifies for design rights by reference to [details do not matter]
"(1) The owner of design right in a design has the exclusive right to reproduce the design for commercial purposes –
(a) by making articles to that design, or
(b) by making a design document recording the design for the purpose of enabling such articles to be made.
(2) Reproduction of a design by making articles to the design means copying the design so as to produce articles exactly or substantially to that design, and references in this part to making articles to a design shall be construed accordingly.
(3) Design right is infringed by a person who without the licence of the design right owner does, or authorises another to do, anything which by virtue of this section is the exclusive right of the design right owner."
In their pleading Fultons put their alternative cases as follows:
"The Claimant is entitled to design right …in the design of the whole of the Miniflat case (irrespective of its precise dimensions) alternatively in the design of that aspect of the Miniflat case which consists of the whole of it (irrespective of its precise dimensions) minus the shorter side of the cuff adjacent to the vent…"
The Judge held Fultons were entitled to design right both in the whole of the case and in the alternative "cut-out" design described by the underlined words. As I have said, he held that types C-E did not infringe the right in design of the whole article but that it did infringe the right in the "cut-out" design. Fultons do not cross-appeal the finding of non-infringement of the design in the whole case – rather grudgingly accepting that it would be difficult to show an error of principle which is the standard needed to succeed on appeal in this sort of case, see .
Totes say the Judge was wrong in law – that the law confers no separate unregistered design right in a cut-out design. They say that the notion of such a design is – to use the Judge's word —a "chimera." Only one thing was designed, the Miniflat case as a whole – the "cut-away" design is a different design, not envisaged by Mr Fulton. They reinforce the submission by the forensic point that Mr Fulton in his evidence positively asserted that customers preferred the slit design to the cut-out design – thus emphasising the fact that the cut-out is different from the slit.
The Judge rested his decision both on the language of s.213(2) and authority. Ultimately the question turns on the language, but it is convenient to consider authority first. It is all one way – against Totes. I turn to review first the cases and then the learned writers.
The two most important cases are and a previous umbrella case brought by Fultons, , . I can go straight to the latter because Park J quotes the key passage in Laddie J's judgment in OSI. At p. 270 Park J said this:
"Section 213(2) is a short subsection, but it contains most of the fundamental concepts which go to determine whether design right subsists, and, if so, what is subsists in. The words are "the design of any aspect of the shape or configuration … of the whole or part of an article". So the core meaning of "design" is the shape or configuration of an article. Prima facie that would mean the shape or configuration of the whole article. But it does not have to be the whole article: the design can be the shape or configuration of the article, and apparently any part may be sufficient. And the scope of what design right may subsist in is enlarged further by the reference to "any aspect" of the shape or configuration concerned. This creates a large number of possible permutations which can arise in the case of any one article. Take an umbrella. Design right might be claimed to subsist in the whole aspect of the shape or configuration of the whole of the umbrella, or it might be claimed to subsist in one or more particular aspects of the shape or configuration of one or more particular parts of the umbrella. Then again, each of the handle and the case, distinct from the whole packaged umbrella, might be regarded as an "article" by itself for the purposes of formulating the claim to design right.
In this connection the manner in which the claimant formulates its particulars of claim in the pleadings is important. Laddie J focused on this point in He said: at 422.
"This means that the proprietor can trim his design right claim to most closely match what he believes the defendant to have taken. The defendant will not know in what the alleged monopoly resides until the letter before action, or, more usually, the service of the statement of claim. This means that a plaintiff's pleading has particular importance. It not only puts forward the claim but is likely to be the only statement of what is asserted to be the design right."
Fulton has formulated its claims to design rights in a...
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