Fabricated evidence dismantles Mancunian furniture company’s defence for design infringement

On 24 February 2022, the High Court handed down judgment on ASR Interiors Limited v AWS Trading Limited, finding that three of ASR’s registered designs (each for items of furniture) had been infringed by AWS.

AWS Trading Limited’s (“AWS”) main defence, namely that the design registrations were invalidated because their products pre-dated ASR Interiors Limited’s (“ASR”) design registrations, was found to be based on fabricated evidence. The Judge also rejected the Defendant’s arguments that its products gave a different overall impression to the Claimant’s designs. This article examines the implications of this decision for design-based businesses.

The facts

ASR, a Coventry based furniture company, claimed that AWS had infringed three of its design registrations for a sideboard, a winged ornament, and an upholstered chair. AWS, a Manchester based furniture company, conversely argued that that each of its allegedly infringing products pre-dated the design registrations (of which the earliest was 26 December 2018), which therefore invalidated them. In response, the Claimant alleged that the Defendant had falsified its evidence to make it appear that the allegedly infringing products had in fact been made available prior to the registration dates of the Claimant’s designs.

The Claimant’s three products:

The Defendant’s three products:

The ruling

Sales pre-dating registrations

The Defendant attempted to rely on the following documents to prove that it had been selling the allegedly infringing goods prior to the date of the Claimant’s design registrations:

• Sales orders;
• Customs clearances;
• Delivery invoices;
• Purchase orders;
• Design drawings; and
• Price lists.

The Judge found that the sales orders, for which the Defendant could only provide hard rather than electronic copies, were fabricated. The Defendant’s explanation for losing the electronic copies - changing computers - did not satisfy the Judge, particularly in the light of witness evidence from the alleged recipient who denied having made a purchase at the earlier date pleaded (10 May 2019). Further, the names of the products on customs clearance and delivery invoices from 2018 were not specific enough for it to identify the products in question; in particular, a reference to ‘sideboards’ was not enough to show that it was the relevant sideboard. The absence of any of the products in an earlier 2019 price list submitted also made it difficult to understand that the products had been on sale to customers at that time.

The design drawings of the Defendant’s chair included the knocker lion’s head feature in much clearer depiction than the rest of the chair, which the Judge considered made it apparent that this aspect of the drawing had been added later. The Judge concluded that the sales orders and the chair design drawings had been fabricated, and that it was unsafe to rely on anything which the Defendant’s witness had said which was unsupported by other material.

‘Different overall impression’

The Defendant also argued that their products did not infringe the Claimant’s registered designs because they produced a different overall impression on the informed user. The Judge dismissed the Defendant’s arguments about the different sizes of the various products, stating that this point was irrelevant since the designs were not restricted to any given size. He accepted that there were some differences, such as the crushed diamond vs. plain mirrored diamond of the sideboard, and the differences in the mitred corners on the draws and door of the same, however, he rejected arguments that four row buttons vs three buttons on the back of the chair, or varying dimensions of the crystals on the wings, were sufficient to create a different overall impression. When evaluating the sideboard similarities, the Judge focused on the arrangement of the products, particularly the arrangement of the draws and doors, which he concluded gave a similar overall impression.

Comment

This decision serves as a stark reminder for businesses of the importance in keeping records to prove when a product was first made available for sale. Although it was found that the Defendant had doctored their documents, the discussion of those documents in such detail provides helpful insight as to the type of information that should be included; records should be dated and products should be referenced consistently across all documentation, with the product name being sufficiently particularised (as above, a reference to a ‘sideboard’ is unlikely to be sufficient to identify a particular sideboard). It is crucial to keep historic computer records when transferring to a new computer system, and to keep all brochures and price lists regularly updated, to be able to prove when a product was first made available.

In addition, the judgment provides helpful insight on the factors to be considered when determining whether a design produces a ‘different overall impression’ – the layout of a product is likely to be important but varying number of buttons or embellishments, or different dimensions of a particular pattern, are unlikely to be sufficient in and of themselves.

Article co-authored by Georgina Morris, Trainee Solicitor at CMS.