A. Fulton Company Ltd v Grant Barnett & Company Ltd

Unregistered design right protects an original design that is not commonplace, even where the design is functional and not aesthetically attractive. The commonplace exclusion is applied narrowly and concerns the shape or configuration of the design, not the article or product generally. The exclusions for methods of construction, interface features, dependent appearance and surface decoration do not remove protection from design features merely because they assist construction, contain another article or have a functional context. Secondary infringement requires substantial similarity, copying, and knowledge or reason to believe that the article is infringing. A precise statement of claim may provide the necessary reason to believe after a reasonable period for investigation.

Fulton claimed design right in the handle of its Flat Compact umbrella and in the case used for its Miniflat and Flat Compact umbrellas. Grant Barnett imported and dealt with 6F Ultra Compact umbrellas incorporating similar handles and cases.

The dispute concerned subsistence and ownership of design right, the application of the statutory exclusions, copying, and secondary infringement under the Copyright, Designs and Patents Act 1988. The judgment found that the designs originated with Mr Fulton and that Fulton owned the rights. It then considered whether the imported articles were made substantially to those designs, copied from them, and known or reasonably believed to be infringing.

1. Subsistence. Design right subsisted in the Flat Compact handle and Miniflat case. Both were consciously designed and original. A design need not be new, and the commonplace exclusion in section 213(4) should be construed narrowly. The court must compare the design with similar articles in the relevant design field, but the ultimate question is for the court.
2. The handle and case were not commonplace. General rectangularity or functionality did not determine the issue. Detailed choices such as sloping sides, rounded corners, a partly domed top, outward-facing seams and retention of the case’s shape gave the designs distinctive configurations.
3. The exclusions in section 213(3) did not apply. The method or principle of construction exclusion concerns the process by which a shape is produced, not the resulting shape. The interface exclusion is directed principally at spare parts and does not prevent protection for an article merely because it contains another article. The handle was not dependent on the appearance of the umbrella in the statutory sense. The seams of the case were significant three-dimensional aspects of shape or configuration, not mere surface decoration.
4. Ownership. Mr Fulton was the designer. Although no written employment contract existed, the relationship between him and the company was plainly one of employment. Under section 215(3), Fulton was the first owner.
5. Infringement. The 6F Ultra Compact handle and case were made substantially to the protected designs. Exact similarity was unnecessary. Their close similarity, the opportunity for access, and additional matching construction details raised an inference of copying which Grant Barnett did not rebut.
6. Grant Barnett lacked actual knowledge that the articles were infringing. It nevertheless had reason to believe that the case was infringing from the time of its first importation, because it had discovered Fulton’s registered design and instructed a minor alteration to the case. As to the handle, the necessary reason to believe arose three weeks after service of the substituted statement of claim, on 17 August 1998.
7. The later-acquired reason to believe could be relied upon in the existing action. Following Vax Appliances Ltd v Hoover PLC, the claim could be amended or pursued in the existing proceedings where that was convenient and caused no prejudice.
8. Grant Barnett’s dealings constituted secondary infringements in respect of the case from the first importation, and in respect of the handle from 17 August 1998. Additional damages were refused because the infringements were not flagrant. Further argument was required on remedies.

The supplied judgment text records proceedings before the High Court, Chancery Division, before Mr Justice Park, and does not state the decision appealed from or an earlier appellate stage.