Neptune (Europe) Ltd v Devol Kitchens Ltd
| Jurisdiction | England & Wales |
| Judge | Mr Justice Henry Carr |
| Judgment Date | 25 August 2017 |
| Neutral Citation | [2017] EWHC 2172 (Pat) |
| Docket Number | Case No: HC-2015-000953 |
| Court | Chancery Division (Patents Court) |
| Date | 25 August 2017 |
[2017] EWHC 2172 (Pat)
IN THE HIGH COURT OF JUSTICE
CHANCERY DIVISION
PATENTS COURT SHORTER TRIALS SCHEME
Royal Courts of Justice
Rolls Building
Fetter lane, London
EC4A 1NL
The Hon Mr Justice Henry Carr
Case No: HC-2015-000953
Hugo Cuddigan QC and Jonathan Moss (instructed by Gowling WLG) for the
Claimant Henry Ward (instructed by Bristows LLP) for the Defendant
Hearing dates: 19, 22, 23 and 26 June 2017
Judgment Approved
Introduction
This is a claim by the Claimant ("Neptune") for infringement of UK unregistered design rights and infringement of a Community Registered Design in respect of kitchen furniture. At the start of the trial Neptune was also pursuing a claim for copyright infringement in a kitchen brochure, and the Defendant ("DeVOL") was pursuing a counterclaim for unjustified threats in respect of a letter before action which it had received. Each of these claims was commercially unimportant and legally unpromising. They were both abandoned during the parties' closing submissions.
This claim was heard under the Shorter Trial Scheme. Practice Direction CPR 51N provides at [2.3] that the Shorter Trial Scheme will not normally be suitable for cases including an allegation of fraud or dishonesty; cases which are likely to require extensive disclosure; cases where extensive witness or expert evidence is relied upon; or cases which raise multiple issues. In this case, the unregistered design claim involved an allegation of dishonesty, in that it was said that DeVOL was not telling the truth about whether it had copied Neptune's kitchen design. Extensive disclosure was given and extensive evidence of fact and expert evidence was relied upon. The claim gave rise to multiple issues, in that Neptune originally relied upon unregistered design rights in 12 items of kitchen furniture (now reduced to 11) and in respect of each item, it pleaded a list of multiple features which it described as " key features".
In contrast to registered design claims, where copying is irrelevant, unregistered design claims require proof of copying, which is likely to give rise to disclosure, significant cross-examination and, in all likelihood, an attack on credibility. Where multiple designs are in issue, and multiple features need to be considered, this does not necessarily mean that the case is unsuitable for the Shorter Trial Scheme. It does mean, however, that if it is to be heard as a Shorter Trial, the case needs to be controlled from an early stage by robust case management.
At the pre-trial review, I ordered that the issues of liability in relation to the unregistered design rights were to be tried based upon 3 designs selected by Neptune and 3 designs selected by DeVOL. With hindsight, it would have been better if I had limited the parties to a single design each, as the same issues could have been fully argued. In future (irrespective of whether the claim is part of the Shorter Trial Scheme) where multiple designs are in issue, it would be sensible to confine the liability trial to an appropriate, and limited, selection.
Background facts
Neptune
Neptune was founded in 1996. Initially, it sold freestanding hammocks and then progressed to the design of garden furniture. It began the production of interior furniture, and in particular kitchen furniture, in about 2002. Between 2002 and 2006, Neptune's product range expanded and it sold its furniture through a distribution network. In 2011, Neptune opened its first own branded store and it now has about 20 stores.
Neptune is very successful. It has received recognition in the form of awards for its kitchens. Amongst other awards, in 2014 it was a Gold Award Winner in the Best Luxury Kitchens category in the House Beautiful Awards for Best Furniture in relation to its " Limehouse" kitchen collection. In 2017, it appeared in Country and Town Houses' Great British Brands, which is a selection of 150 luxury brands. This shows, as is evident from inspection of the kitchen units in issue, that Neptune kitchens are very attractive and of high quality. However, there is no evidence that Neptune's kitchen range which is alleged to have been copied in these proceedings, which is known as " the Chichester range", has received any such awards, nor as to the criteria pursuant to which these awards are made.
The Chichester range was designed in about 2006, although there is some dispute about the extent to which certain designs in issue in these proceedings were taken from pre-existing Neptune designs. Mr John Sims-Hilditch, the Managing Director of Neptune, explained in his first witness statement that Neptune's intention with the Chichester range was to bridge the " modular" (cheap) and " bespoke" (expensive) markets by producing high quality modular kitchens that would give the impression of a bespoke kitchen, without costing as much. This aim was achieved by the incorporation of a number of design features, which Neptune characterises as the key features of the designs relied upon.
For example, the Chichester range used " fully framed" kitchen cabinets where the doors are hung onto a visible outer frame, rather than being fitted with internal hinges, where only the door is visible from the outside of the cabinet. Mr Sims-Hilditch said that in 2006 a fully framed kitchen look was associated with bespoke kitchens, whereas the frameless look was typical of modular kitchens. In addition, the Chichester range contained options for furniture of varying widths, so that kitchen spaces could be filled with a run of individual pieces without bespoke manufacture.
DeVOL
DeVOL has designed and sold furniture since the 1980s. In particular, it has marketed a traditional Georgian kitchen, known as " the Classic range", since 1989. From about 2000, various units in the Classic range were included in a CAD library. The Classic range covered a range of different sizes, and cabinets in the CAD library were included in a range of different widths. Customers could have units made to measure. It was a bespoke kitchen range which included certain standard options. It included both freestanding furniture and fitted runs. Page 1 of the Annex to this Judgment contains photographs showing the general appearance of the Classic range, which looks similar to the general appearance of the Chichester range.
As a result of the recession in 2008, DeVOL found that its business was threatened by a downturn in the luxury kitchen market. It decided to extend its product range to include third-party kitchen furniture. Accordingly, DeVOL approached Neptune and expressed an interest in selling the Chichester range. DeVOL chose the Chichester range because of its similarity to the Classic range, both of which were Georgian in style, with prominent " cock-beading" and moulding. A Chichester range kitchen was installed in July 2008 at DeVOL's premises in Loughborough.
DeVOL was a successful retailer of the Chichester range, and between November 2008 and March 2010 its turnover was approximately £16,000 per month, with additional consequential sales. However, in 2010 the relationship between the parties broke down, for reasons which are not relevant to these proceedings, and by August 2010 DeVOL had ceased the supply of Neptune's products.
In 2009, whilst it continued to sell Neptune kitchens, DeVOL decided to create its own range of modular kitchens which, at that stage, it planned to sell in addition to Neptune's Chichester range. Rather than the traditional Georgian style of the Classic and Chichester ranges, it adopted a simpler " Shaker" style. Designs for the DeVOL " Shaker range" were first created for a customer in September 2009, and the Shaker range was offered for sale generally in May 2010.
Inception of Neptune's claim
DeVOL points out that Neptune knew about the DeVOL Shaker range from 2011. However, no complaint was made until, at the earliest, late 2013, and no claim was brought by Neptune until March 2015. Although the progress of this claim was undoubtedly very slow, and suggests that it was not a matter of pressing concern to Neptune, this is not relevant to any pleaded defence to liability.
Initially, Neptune alleged that the DeVOL Shaker range was a copy of Neptune's own Shaker range, which is known as " the Suffolk range". However, Neptune learnt that its Suffolk range post-dated the creation of the alleged infringements, and that case was not pursued. Instead, Neptune alleged that its Chichester range had been copied. No-one has suggested that Neptune's Suffolk range was copied from the DeVOL Shaker range. This indicates, as is also apparent from consideration of the many photographs in evidence, that kitchens in the same or similar styles can look like each other without being copies.
Bespoke and modular kitchens
Neptune contends that there was a split in the kitchen furniture market between bespoke and modular kitchens. I agree that kitchens can be categorised as either bespoke or modular, and that it is a useful general distinction. Mr Charles Smallbone, the co-founder of the well-known kitchen design company Smallbone of Devizes, who gave expert evidence on behalf of DeVOL, explained that a modular kitchen incorporates cabinets designed and specified to a restricted set of dimensional criteria, which can be constructed from a standard set of components, and hence may be less costly to produce than a bespoke kitchen, as the bespoke alternative may incorporate a number of specially dimensioned items made uniquely for the client making the purchase.
However, I do not consider that this is, or was at any time, a rigid or mutually exclusive distinction. Mr Smallbone explained, and I accept, that high-end bespoke kitchens such...
To continue reading
Request your trial
-
Quantum Advisory Ltd v Quantum Actuarial LLP
...as well as future proceedings.” 86 Mr Hill relied on the decision of Henry Carr J in Neptune (Europe) Ltd v Devol Kitchens Ltd [2017] EWHC 2172 (Pat), [2018] FSR 3, which concerned the effect of an amendment to section 213(2) of the Copyright, Designs and Patents Act 1988 effected by the ......
-
Shnuggle Ltd v Munchkin, Inc.
...Defendants submit that the following principles can be discerned from the case of Neptune (Europe) Limited v DeVol Kitchens Limited [2017] EWHC 2172 (Pat): i) To be a part, as opposed to an aspect, something should be created separately and not simply be a disembodied feature of a whole. i......
-
(1) Cantel Medical (UK) Ltd v ARC Medical Design Ltd
...parts may the owner claim rights to the design in any of its potential configurations? In Neptune (Europe) Ltd v DeVol Kitchens Ltd [2017] EWHC 2172; [2018] FSR 3, a case about kitchen units, Henry Carr J took the view that it would not be possible to consider the functionality of moving pa......
-
Scomadi Ltd and Another v RA Engineering Company Ltd Defendants and Others
...remains good law notwithstanding that the actual finding of infringement was later overturned by the Court of Appeal: see also Neptune (Europe) v Devol Kitchens [2017] EWHC 2172 (Pat) at [145], Henry Carr J. This summary in turn drew upon earlier authorities such as Samsung Electronics v A......
-
UK Unregistered Design Right Is It Any Clearer?
...Ltd v H Young Operations Ltd [2014] EWHC 4034 (IPEC) and the late Henry Carr J in Neptune (Europe) Limited v DeVol Kitchens Limited [2017] EWHC 2172 (Pat)) and concluded that "I consider that a part of an article for section 213(2) is an actual, but not abstract part which can be identified......
-
Short But Mighty
?
...1b Family Mosaic Home Ownership Ltd v Peer Real Estate Ltd [2016] EWHC 257 (Ch) 2 Neptune (Europe) Limited v Devol Kitchens Limited [2017] EWHC 2172 (Pat) 3 National Bank of Abu Dhabi PJSC v BP Oil International Ltd [2016] EWHC 2892 (Comm) (18 November Read the original article on GowlingWL......