Farmer Build Ltd v Carier Bulk Materials Handling Ltd & Ors

For design right under Part III of the Copyright, Designs and Patents Act 1988, an independently created design need not be novel. The question is whether, viewed objectively against other designs in the same field at the time of creation, it is fairly and reasonably described as commonplace. A combination of commonplace features may itself be original and non-commonplace. The claimant must identify precisely the aspects of shape or configuration relied on and what is original about them; the legal burden remains on the claimant. Mere delay in enforcing design rights within the limitation period does not constitute acquiescence. Acquiescence requires conduct which reasonably induces belief that the right is assented to and reliance or detriment.

Farmers Build claimed unregistered design right in the TARGET agricultural slurry separator and specified component combinations. Carier manufactured and marketed the substantially similar ROTOSCREEN machine after the parties’ commercial relationship ended.

Rattee J declared that design right subsisted in the whole machine and several component combinations, but refused damages or an account of profits on the ground of acquiescence. Carier cross-appealed against the subsistence findings and sought to uphold the refusal of relief on additional grounds. The central issues were whether the claimed designs were original and non-commonplace under section 213 of the Copyright, Designs and Patents Act 1988, and whether Farmers Build’s delay barred compensation.

1. Disposition. The appeal was allowed on acquiescence and the cross-appeal was dismissed, except in relation to the scraper assembly. The order was: appeal allowed with costs; cross-appeal dismissed.
2. Commonplace designs. Section 213(4) does not impose a novelty requirement. The court must compare the claimed design with designs of similar articles in the same field at the time of creation. It must first decide whether the design was independently originated rather than slavishly copied. If so, it must make an objective assessment, informed by the evidence, of whether the design is commonplace. This remains a question of fact and degree for the court.
3. A combination of features which are individually commonplace may nevertheless produce an original design which is not commonplace. A commonplace article may contain non-commonplace aspects of shape or configuration. The relevant comparison is with the design field in question, not necessarily with machinery generally.
4. The TARGET machine and the claimed inner hopper, bearing-and-thrower combination with roller guards, support-arm and spring-mounting combination, and perforated drum were capable of protection. The scraper assembly finding could not stand because the pleaded claim did not identify the spring-loaded hinge as a design feature and the legal burden of establishing the claimed design had not been discharged.
5. Acquiescence. Infringement of design right is a statutory tort under section 229(1). A claimant who brings proceedings within the limitation period is ordinarily entitled to seek compensation. Mere knowledge of infringement, delay, continued trading, or standing by is insufficient. There must be conduct which induces a reasonable belief that the right will not be enforced, together with reliance or detriment sufficient to support an estoppel. The evidence did not establish that Farmers Build induced such a belief or that Carier relied on it. The refusal of damages or an account of profits was therefore wrong.

• Court of Appeal (Civil Division) [1998] EWCA Civ 1900: appeal allowed on acquiescence; cross-appeal dismissed except as to the scraper assembly.
• High Court, Chancery Division: Rattee J declared that design right subsisted in the TARGET machine and specified components, but refused damages or an account of profits on grounds of acquiescence.