Satco Plastics Ltd v 1. Super Pack Ltd and Another
| Jurisdiction | England & Wales |
| Judge | Mr Recorder Baldwin |
| Judgment Date | 05 June 2013 |
| Neutral Citation | [2013] EWPCC 29 |
| Court | Patents County Court |
| Date | 05 June 2013 |
| Docket Number | Claim No: CC13P00523 |
[2013] EWPCC 29
IN THE PATENTS COUNTY COURT
INTELLECTUAL PROPERTY
Mr Recorder Baldwin QC
Claim No: CC13P00523
Colin Challenger (instructed by Everatt's) for the Claimant
Jonathan Hill (acting under the Bar's Public Access Scheme) for the first Defendant
Hearing date: 23 May 2013
This is an action for infringement of unregistered design rights alleged to subsist in a number of features of plastic microwave containers. The letter before action is dated 20 June 2012 and the Claim Form and Particulars of Claim are dated 27 July 2012. Although the Claimant has known since at least July 2012 that the products complained of were manufactured overseas, secondary infringement by importation or sale has not been pleaded and is not relied upon 1.
The initial case presented against the Defendants also included allegations of passing off. This case appears to have been abandoned as a result of orders made at a directions hearing; it was not pursued at the trial. On 28 August 2012 the action against the second Defendant was stayed until the court directs otherwise, and the trial proceeded against the first Defendant only.
The claim raises the question of whether the manufacture of articles overseas can amount to primary infringement of UK unregistered design right.
The relevant sections of the Copyright Designs and Patents Act 1988 ( CDPA) include:
213.—Design right.
(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.
226.—Primary infringement of design right.
(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…
(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.
227.—Secondary infringement: importing or dealing with infringing article.
(1) Design right is infringed by a person who, without the licence of the design right owner—
(a) imports into the United Kingdom for commercial purposes, or…
an article which is, and which he knows or has reason to believe is, an infringing article.
228.—Meaning of "infringing article".
(1) In this Part "infringing article", in relation to a design, shall be construed in accordance with this section.
(2) An article is an infringing article if its making to that design was an infringement of design right in the design.
(3) An article is also an infringing article if—
(a) it has been or is proposed to be imported into the United Kingdom, and
(b) its making to that design in the United Kingdom would have been an infringement of design right in the design or a breach of an exclusive licence agreement relating to the design.
255.—Countries to which this Part extends.
(1) This Part extends to England and Wales, Scotland and Northern Ireland.
(2) Her Majesty may by Order in Council direct that this Part shall extend, subject to such exceptions and modifications as may be specified in the Order, to—
(a) any of the Channel Islands,
(b) the Isle of Man, or
(c) any colony.
Counsel for the Claimant's main submission is that manufacture in China or elsewhere overseas of articles exactly or substantially to a design in which rights subsist pursuant to s. 213 of the CDPA amounts to an infringement under s. 226 for which relief can be granted, and that the matter is as simple as that. However, if right, this submission would have a very far reaching effect. Indeed, it is likely, that it would have been the subject of some comment by legal writers. Counsel was unable to show me any authority or any academic or text book writings which supported his submission 2 and in my view it is flawed and I reject it. It seems to me to be inconsistent with the definition of infringing article in s. 228(3) and to fly in the face of s. 255 which prescribes the countries to which the relevant sections extend, as well as to the long and well-established tenet that intellectual property rights of the kind in issue are territorial.
Counsel's fall back submission is that there is primary infringement of design right if there is manufacture overseas of an article exactly or substantially to a design with the sole intent of importing the manufactured articles into the United Kingdom. Furthermore, counsel submitted that when I came to analyse the facts I should find that the first Defendant has behaved unhelpfully in the context of attempts to resolve or get to the bottom of the dispute and that I should take this into account when considering whether the manufacture overseas was with the sole intent of importing into the United Kingdom. Again, counsel was unable to show me any authority or academic writings which supported his submission.
I reject this fall back submission of the Claimant. It goes nowhere towards overcoming my reasons for rejecting the main submission. Furthermore, primary infringement of intellectual property rights such as design rights and copyrights is, once sufficient copying has been established, not generally dependent on the motive of the perpetrator of the acts complained of.
Since it is common ground that all the allegedly infringing items were made overseas, the action, being based only on allegations of primary infringement of unregistered design right, must, in my judgment, fail.
Since I heard evidence and argument upon whether or not the features in the...
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