J. Mac Safety Systems Ltd v Q Deck Safety Systems Ltd

Hearing dates:17 to 19 October and post-trial submissions 30 October 2023

Approved Judgment

Remote hand-down: This judgment will be handed down remotely at 4pm on 4 September 2025 by circulation to the parties or their representatives by email and release to The National Archives.

I direct that no official shorthand note shall be taken of this judgment and that copies of the version as handed down may be treated as authentic.

The Deputy Judge:

Introduction and General Matters

1. This is a claim for unregistered design right infringement of a safety decking system design. These safety decking systems are used on construction sites as part of working platforms and for fall protection. There were also claims for registered design infringement and passing off. The registered design claim was discontinued earlier in the case and no issues arising from that earlier claim require determination. On the first day of trial the Defendant agreed to submit to judgment on the passing off claim on the basis of its pleaded case. The issue of any inquiry as to damages on that claim will be addressed at the form of order hearing.

2. The Claimant is a company called J. Mac Safety Systems Limited. Mr Luis McCarthy, the managing director of the Claimant, is a third-generation scaffolder. He has been involved in scaffolding since around 2011. In 2015 he established the Claimant company. The Claimant company was intended to innovate specialist scaffolding and access products. The Claimant has various designs and articles made to those designs which are the basis of the claim in this case. These are amongst a number of other innovative products the Claimant explains it produces.

3. Mr McCarthy explained that 10 years ago, fall protection for a scaffolding operative, building an external scaffold on a construction site, would be “big inflatable bags or bean bags, that were placed inside houses that people used to fall on. That was to provide reduction in the severity of the damage received following a fall.”. Before developing the designs and articles in issue, Mr McCarthy was hiring a pre-priority product called TRAD Deck which was also a safety decking system (see Figure 1 p27). These safety decking systems provide a platform to be built inside the construction area of a new building. Mr McCarthy felt he could improve on the design of the TRAD Deck system. For example, areas identified for improvement were that the carry handles on the TRAD Deck panel are off-set from a centrally balanced position and scaffolding could not be built through the platform. This led to the design and development of a system called the Macdeck. The Claimant says this was designed by Mr McCarthy, and Liam Eley, an external designer with the company Pioneer Procurement Ltd (“PPL”).

4. The Claimant asserts design rights recorded in four design documents set out in Annexes 3, 3A, 4 and 5 to the Re-Amended Particulars of Claim (“APOC”); each is reproduced in annexes to this judgment. These are: (1) the Macdeck 1x1 Panel Design (Annex 1 of the judgment/Annex 3 of the APOC), (2) the Macdeck Panel Perimeter Design (Annex 2 of the judgment/Annex 3A of the APOC), 3) the Macdeck 0.75x1 Panel Design (Annex 3 of the judgment/Annex 4 of the APOC) and (4) the Macdeck Pin Design (Annex 4 of the judgment/Annex 5 of the APOC). Together these are referred to as the Macdeck Designs. Paragraphs 9 and 9A of the APOC set out the pleaded Macdeck Designs. The text from paragraph 9A of the APOC is attached to this judgment at Annex 5. The Macdeck System comprises the articles known as the Macdeck 1x1 Panel, the Macdeck 0.75x1 Panel and the Macdeck Pin. The trial deals with liability but also one issue that goes to the matter of quantum – the date when articles made to the Macdeck Designs were first made available for sale or hire.

5. The Defendant is a company called Q Deck Safety Systems Limited. It supplies safety decking for use in construction sites. It was a customer of the Claimant from 2019 and purchased almost £1 million of products made to the Macdeck Designs. The Defendant does not accept the Claimant has proved these articles are made to the Macdeck Designs. I deal with this issue later in the judgment and determine these products (which I refer to as the Macdeck System or individually as the Macdeck 1x1 Panel, Macdeck 0.75x1 Panel and Macdeck Pin) were made to the Macdeck Designs.

6. In 2019 the Defendant decided it would design its own safety arrest decking system. The resulting articles referred to as Q Deck are the subject of the claim for infringement of the Claimant's unregistered design rights.

7. The Q Deck system here comprises; (1) the Q Deck 1x1 Panels, (2) the Q Deck 0.75x1 Panels and the Q Deck Pins (“the Q Deck Components”). Images of these (other than an image of the Q Deck 0.75 x1 Panel which was not included in Annex 8 of the APOC) are set out in Annex 6 of this judgment / Annex 8 of the APOC.

8. On the first day of the trial there were five separate applications that needed to be considered. One was dealt with by agreement, another related to reliance by the Claimant on late evidence and was not opposed. The remaining applications (all issued days before the trial) dealt with; (1) the Defendant's request for specific disclosure, (2) the Claimant's request to amend its Amended Particulars of Claim, and (3) the Defendant's request to amend its Re-Amended-Defence including regarding innocent infringement pursuant to s.233(1) Copyright, Designs and Patents Act 1988 (“ CDPA”).

9. It is not necessary to delve into the lengthy history and details of these applications for the purpose of this judgment, except to the extent to briefly note outcomes which impacted issues in this case. Regarding (1), the parties worked to narrow the issues. During the trial, the Claimant served a fourth witness statement of Mr McCarthy responding to the Defendant's Application dated 26 September 2023 and served a relevant disclosure statement. Regarding (2), the Claimant was given permission to amend its APOC in paragraph 9(ii) to mirror the language in paragraph 9(ii) that the whole designs were the “upper face and sides of” the relevant panels. Permission was refused to rely...