Having waited for more than ten years for the first Court of Appeal decision on unregistered design right in the case of Farmers Build Limited -v- Carier Bulk Materials Handling Limited, the Court of Appeal has now given Judgment in two further design cases in less than one month, one concerning unregistered design right (Scholes Windows Ltd -v- Magnet Ltd [2001] EWCA CIV 561) and one concerning registered designs (Thermos Ltd -v- Aladdin Sales and Marketing Ltd [2001] ALL ER (D) 129 (10th May 2001). In both cases, the appeals were dismissed, the Court of Appeal finding that the relevant design considerations were a matter for the trial judge, who was to consider the similarities and differences in design from the point of view of the customer rather than an expert in designs. The Court in both instances referred to the decision of the House of Lords in Designers Guild Ltd -v- Russell Williams (Textiles) Ltd [2001] FSR 113, reviewing the appellate role on issues of fact, or mixed law and fact, in copyright cases, and considered such guidance to be equally applicable in design right cases and registered design cases. Accordingly in such cases where the Judge was required to apply a legal standard to the facts, the Court of Appeal will only interfere with the first instance decision where the trial judge misdirected himself or erred in principle. This had not occurred in either case. In both cases, the Court of Appeal also gave consideration to the impact of time on the protection of designs.
In Scholes Windows -v- Magnet, the Court of Appeal gave consideration to possible limitations to the phrase "the design field in question at the time of the design's creation" in determining whether a design was "commonplace" for the purposes of the Copyright Designs and Patents Act 1988. The Court held that the relevant design field is not limited by the nature and purpose of the article in question, in this case Victorian sash windows, nor the material structure of such article, here U-PVC. This is since design right protects aspects of shape or configuration and is not a right in the article itself nor to any particular construction, use or application of the article. Accordingly the relevant design field was that of windows and not U-PVC sash casement windows. The Court of Appeal also held that the relevant design field, to which the design in suit is compared, is not limited in time and that "old" or "historical" designs were to be considered by the Court provided they could fairly and reasonably be regarded included in the design field in question at the time of the creation of the design in suit. Although sash windows have not been used in new buildings for many years (in the sense of being used by designers in new designs), they were still there to be seen on windows in houses and to inform the eye of designers or anyone else who was interested.
In Thermos -v- Aladdin, the Court of Appeal again gave consideration to the approach of the trial judge in determining infringement of the Claimant's registered design by the Defendant's design of flask. The Court of Appeal held that the Judge had not misdirected himself in comparing the features of the designs in terms of their function and appeal to the eye. The Judge's considerations of the function of the handle of the flask, being suitable for use by a gloved hand, were to be read in context as rather being appropriate considerations of shape and configuration. Further, the Court of Appeal upheld the "now and later" test adopted by the trial Judge, comparing not only the designs face-to-face, but also from the point of view of the consumer who might make such comparison over a period of time, recalling only certain features of the particular design. The Court of Appeal has thus again supported the incorporation of an equivalent to the trade mark/passing off doctrine of "imperfect recollection" into design law. Some may consider such doctrine more appropriate to the former field where the issue of confusion is frequently required to be established.
If you have any queries about these cases, please contact Nick Beckett by e-mail at nicholas.beckett@cms-cmck.com or by telephone on +44 (0)20 7367 2490.
