KF Global Brands Ltd v Lead Wear Ltd
| Jurisdiction | England & Wales |
| Judge | Douglas Campbell |
| Judgment Date | 02 June 2023 |
| Neutral Citation | [2023] EWHC 1303 (IPEC) |
| Court | Intellectual Property Enterprise Court |
| Docket Number | Case No: IP-2022-000020 |
[2023] EWHC 1303 (IPEC)
RECORDER Douglas Campbell KC
Case No: IP-2022-000020
IN THE HIGH COURT OF JUSTICE
BUSINESS AND PROPERTY COURTS OF ENGLAND AND WALES
INTELLECTUAL PROPERTY ENTERPRISE COURT
The Rolls Building
7 Rolls Buildings
London, EC4A 1NL
Mr Ian Silcock (instructed by Birkett Long LLP) appeared on behalf of the Claimant
Mr Joshua Marshall (instructed by E1 Solicitors Limited on behalf of the First and Third Defendants, and by Law Valley Limited on behalf of the Second Defendant) appeared for the Defendants
Hearing dates: 20–21 April 2023
APPROVED JUDGMENT
This judgment was handed down remotely at 10.30am on Friday 2 June 2023 by circulation to the parties or their representatives by email and release to the National Archives.
RECORDER Douglas Campbell KC:
Introduction
This is an action for infringement of the UK unregistered design right (“UKUDR”) which is alleged to subsist in the design of the Claimant's BKS-001 cargo trousers. The term “cargo trousers” was used during the trial to mean a type of work trousers featuring a large number of pockets. The only design document relied upon is shown at Annex 1.
The case management conference was heard before HHJ Hacon on 21 October 2022 and identified 8 issues for trial. However as so often happens in this Court, by the time of the trial the list of issues had narrowed somewhat. Before me the live issues were as follows:
1) Subsistence. At the time of its alleged creation, was the Claimant's design original?
2) Primary infringement, within s 226 of the Copyright, Designs and Patents Act 1988 (“the Act”).
3) Secondary infringement, within s 227 of the Act.
4) If liability is established, should additional damages be awarded pursuant to s 229(3) of the Act?
This meant that I did not need to consider issues as to ownership of any design right, nor as to joint liability of the Third Defendant for acts done by the First Defendant. As regards the latter it was accepted that if the First Defendant was liable for any such acts, the Third Defendant was jointly liable in respect thereof.
There were 3 different versions of the alleged infringing products, which were referred to as the First, Second, and Third Samples respectively. They were made for the Defendants in Bangladesh by a company called (somewhat incongruously) S&S Swimwear.
Most of the argument on infringement focussed on the First Sample, which was purchased before sending the letter before action. I attach the Claimant's markup of some photographs of that sample at Annex 2. The Third Sample is essentially the same as the First Sample, save that a particular label known as the “OEKO-TEX” label has been removed. Little time was spent on the Third Sample.
The Second Sample was purchased after sending that letter, but before issuing proceedings. I attach the Claimant's markup of some photographs of that at Annex 3.
The witnesses
I heard evidence from three witnesses. Mr Balal Ahmad Khan is (with his brother Shoaib Khan) a director of the Claimant. He gave evidence about the creation of the BKS-001 design. Mr Mohammed Abdul Kader is the Third Defendant and also the sole director and shareholder of the First Defendant. He gave evidence about the creation of the First Defendant's cargo trousers which were alleged to infringe. Mr Kamrul Hassan is the Second Defendant. He purchased 500 pairs of the First Defendant's cargo trousers and sold them via his own eBay page.
Both sides' counsel were to some extent successful in discrediting the evidence of the other side, as I shall explain in more detail below.
I will now deal with each of the issues in turn.
Subsistence
Legal context
A design will only qualify for UKUDR protection under s 213 of the Act if it is “original” in two distinct senses.
1) The first is set out in s 213(1). This refers to “original” in the copyright sense, meaning originating with the author rather than being copied by the author from another: see Arnold J (as he then was) in Whitby Specialist Vehicles Ltd v Yorkshire Specialist Vehicles and Others [2016] FSR 5 at [43].
2) The second sense is set out in s 213(4). This provides that a design is not original if it is “commonplace” in the design field in question at the time of its creation. This was also considered by HHJ Hacon in Action Storage at [37].
The main point taken by the Defendants in this case concerned originality in the copyright sense. It is well established that the bar is a low one, and “anything in the creation of the design requiring more than slavish copying will result in that design being original”: see HHJ Hacon in Action Storage Systems v G-Force Europe.com Ltd [2017] FSR 18 at [19].
However whilst a small change to an existing design for part of an article may well create an existing design right for that part, it does not automatically create a fresh design right in the design of the whole article. This point arose in each of Raft Ltd v Freestyle of New Haven [2016] EWHC 1711 (IPEC), HHJ Hacon; Neptune (Europe) v DeVol Kitchens [2018] FSR 3, Henry Carr J; and Shnuggle Ltd v Munchkin Inc [2020] FSR 22, HHJ Melissa Clarke. Of these, Neptune (which cites Raft) is probably the clearest example of the principle in operation.
Neptune concerned various glazed cabinets, one of which (“Design 12”) featured a straight top to the glazing. It looked like this:
However, it was accepted during the trial that Design 12 was a modification to an earlier design which had arched, as opposed to straight, tops to the glazing but which was otherwise the same design.
Henry Carr J held as follows:
132 DeVOL submits that, whatever may be the position in copyright law, where a design is produced by making changes to an existing design, the question arises whether a new design right subsists in the new design, or only in those parts of the design that have been changed; Ultraframe v Eurocell [2005] R.P.C. 7 at [129]– [131]; Raft v Freestyle [2016] EWHC 1711 (IPEC) in which changes to an existing design which were “minor and localised” did not give rise to “a new originality” in the design as a whole.
133 I accept DeVOL's submission on this issue. UK unregistered design right, in contrast to copyright, has a relatively short duration. Protection lasts for a maximum of 15 years from the end of the calendar year in which the design was first recorded in a design document or an article was first made to the design, whichever occurred first. If articles made to the design are put on sale within the first five years from the end of that calendar year, then the design right lasts for only 10 years from the end of the calendar year of first sale. During the last five years of the term of design right licences of right are available. It is important to prevent “evergreening” of such design rights, where small changes are allowed to prolong the duration of the right beyond that fixed by the legislation. Where changes are relatively minor, no new design right will arise in the design as a whole.
134 Applying this analysis to Design 12, the modification from arched tops to straight tops in the glazing did not give rise to any new design right in the design as a whole. It was necessary for Neptune to rely upon the earlier design with arched tops, and the date of commencement of protection was the year in which articles made in accordance with the earlier design were first put on sale.
Thus where a new design is produced by making changes to an existing design, it is for the Court to decide whether the changes are relatively minor. If so then no new design right will arise in the new design as a whole but merely in those parts which have changed. It might still be open to the creator of the minor design changes to rely on the design right in the existing design, but only if he or she happens to own that design right too.
In the end little was said about “commonplace” beyond the point (also made in Neptune, at [60]) that it provides a useful crosscheck on the breadth of a claim to infringement.
Analysis
The Claimant relied on the combination of 12 features pleaded at paragraph 6.2 of the Re-Amended Particulars of Claim. I will not set them all out here, but essentially these are the features highlighted in the relevant drawings shown in the Annexes.
The Defendants' pleaded case was that the BKS-001 design as shown in Annex 1 was (a) copied from an earlier design known as the Aldi design, annotated images of which are attached at Annex 4, and was (b) commonplace at the time of its alleged creation having regard to both the Aldi design and also a number of items of prior art. However, all of their submissions at trial were directed to point (a) and I was not addressed on any of the remaining prior art. The topic of originality over the Aldi design was explored in detail with Mr Khan during his cross-examination, as follows.
Mr Khan said that he (Mr Khan) dictated the design to a Mr Naeem Ali of Ali Textiles, who created the actual drawing when they were both present in Mr Khan's offices in the UK. Mr Khan said that copies of the drawing would have been sent by Ali Textiles by emails or WhatsApps in April 2015 but that he could not find any of those. He had instead found the drawing which was used for the case on a USB stick.
Mr Khan agreed that the BKS-001 design was originally sold in cotton and that the fabric did not change to a 65/35 polyester cotton mix until a few months after the trousers were first offered for sale. He could not give any satisfactory explanation as to why the drawing which was dated 13 April 2015 referred to a 65/35 polyester cotton mix.
Mr Khan was shown various contemporary disclosure materials, including an email from...
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