Guidance on unregistered design right infringement

Case Comment: Leighton Vans Limited v David William Harris & Anor. [2022] EWHC 2386 (Ch)

To understand the principles raised in the case, we must briefly set out what are unregistered design rights and the use of interim injunctions.

Like copyright, design rights attach to a design immediately on satisfaction of certain criteria. In short, these are determined by section 213 of the Copyright, Designs and Patents Act 1988. As the case was an interim application for an injunction, the court acknowledged that both parties agreed that whether an unregistered design right existed was a serious issue to be tried.

Interim junctions are intended to prevent injustice pending a full trial. Whether one is granted depends upon the application of the guidelines set out in American Cyanamid Co (No 1) v Ethicon Ltd [1975] UKHL 1. More on that below. In relation to infringement of design rights, injunctions are helpful to prevent the infringing party from benefitting from articles made to the design in dispute.

Background

By way of background, Leighton Vans Limited manufactures and sells custom bumpers, specifically for Volkswagen Transporter vans. They discovered that one of these bumpers (version 1 in the dispute) had been offered for sale by Mr Harris and All Seasons Leisure Limited, but made out of fibreglass rather than plastic. For several reasons, fibreglass is a purportedly worse substance to use.

Leighton Vans requested undertakings from Mr Harris and All Seasons, prohibiting them from the production, sale or use of the designs or “any substantially similar designs…” Additionally, they requested information about the identity of any manufacturers and / or suppliers of the designs. Mr Harris and All Seasons accepted that they did manufacture and sell the bumper in question, but its position was that it had halted all sales of the bumper and destroyed the moulds used to create the bumper in question, and were willing to undertake not to manufacture, use or sell version 1 bumpers. No agreement was reached relating to the information undertakings.

Leighton Vans later identified a further bumper on sale on the All Seasons’ website which they allege infringed upon their unregistered design right. Mr Harris submitted in a witness statement that the design of the second bumper (version 2 in the transcript) was different, in both form and function, to version 1. Justice Miles accepted some superficial differences, but acknowledged that Leighton Vans had not had time to respond to the statement (it having been submitted a day before the hearing) and that no further detail as to the differences was offered by Mr Harris, on which the court drew an adverse inference.

Following a brief run through of the substance of the dispute, the court turned itself to the two questions it felt it had to answer; the first being what the terms of an interim injunction, if any, was to be, and the second being whether the disclosure of the requested information should be ordered.

Injunction

Mr Justice Miles critiqued the phrasing of the draft order presented by the claimant on the basis that it referred to any articles which incorporated the design in dispute. The court held that articles cannot incorporate designs, articles can only be made to designs. Moreover, the draft order used the phrase “substantially similar designs”. This is broader than the protection afforded by section 226(3) of the Copyright, Designs and Patents Act 1988, which prohibits reproduction of the design exactly or substantially to that design, and the use of phrase was therefore unjustified.

A related point raised is that the court generally will not make an order prohibiting a party from acting unlawfully, following Biro Swan Limited v Tallon Limited [1961] RPC 326. Adding in a provision that prohibits infringement without the claimant’s consent adds in an unattractive amount of subjectivity, whilst also giving too much control to the benefitting party. It is for the order itself to determine, as clearly as possible, what the defendant can and cannot do, so that they know with enough clarity what acts will lead to a breach of the order. On the other hand, tying the order to the specific goods in question and the design right was too narrow, affording leeway for the defendant to avoid the intention of the order.

Taking into account the above, the court granted an order against the version 1 bumper. There was little discussion relating to the version 1 bumper, as there was no real dispute by the defendants (as they had admitted selling these goods). In respect of the version 2 bumper, the court applied the American Cyanide principles, being whether there is a serious question to be tried, the balance of convenience, any special factors and whether damages would be an adequate remedy. On the facts, there was a serious issue to be tried as to whether the version 2 bumper breached section 226(3) and there was a potential impact on the reputation of the claimant if the defendants were allowed to continue to sell the version 2 bumper. Therefore, an order was granted in relation to the version 2 bumper as well.

Comment on unregistered design rights infringement

Mr Justice Miles presents a concise view on the use of interim injunctions in a claim for infringement of an unregistered design right. It’s important to keep in mind the main factors that the court will use to determine whether an injunction will be granted. Principally, is there a serious issue to be tried and whether damages are an adequate remedy. In circumstances where the design is being replicated in goods outside of the claimant’s control, it is largely arguable that some sort of reputational risk is likely.

However, potential claimants would do well to remember that the terms of any undertaking they suggest prior to the case coming before the court should be well-suited to the specific allegation. They should not be generalised, nor seek to prevent the defendant from manufacturing articles with a similar design. The legislative framework is designed to prevent exact copies or substantial replications, rather than similarities. Akin to copyright, an alike design does not breach any rights if it does not involve copying. Moreover, injunctions do not operate to prevent unlawful acts. To increase the chances of success, the injunction must be linked to the appropriate design right and the alleged infringing act. Claimants must bear in mind that they will likely be asked to provide a cross-undertaking in damages, so that in the event the undertaking is decided to have been wrongly awarded, the defendant is compensated.

In terms of information disclosure, it is helpful if the claimant is able to present evidence of further breach of their right outside the immediate control of the defendant. The court can only act on the evidence in front of them. The claimant’s requests must be proportionate and necessary for the protection of their rights. In this instance, there was no evidence that anyone beyond the defendant had breached the claimant’s IP, therefore it was not necessary for an order to be made.