Scholes Windows Limited v Magnet Limited

For the purpose of determining whether an unregistered design is commonplace under Copyright, Designs and Patents Act 1988, the design field is confined by the ordinary meaning of the design claimed, not necessarily by the material or commercial use of the article. Existing historical designs may be considered if they could fairly and reasonably be regarded as part of the design field at the date of creation. The question is one of fact and degree, involving an objective comparison of similarities and differences. The trial judge’s overall evaluation should not be reversed on appeal absent a misdirection or error of principle. Expert evidence may assist with comparison, but the ultimate assessment is for the court.

Scholes designed and manufactured U-PVC windows, including the Nostalgia window with a decorative horn feature. It claimed unregistered design right in the horn against Magnet, which marketed a window with a similar feature.

The deputy High Court judge found that the design was original in the copyright sense, that Scholes owned the design right, and that Magnet had substantially copied it. He nevertheless dismissed the claim because the design was commonplace in the relevant design field at the time of creation under section 213(4) of the Copyright, Designs and Patents Act 1988.

The appeal challenged the identification of the design field, the consideration of historical timber sash-window designs, and the conclusion that the horn was commonplace.

1. Appeal dismissed. The Court of Appeal unanimously upheld the deputy judge’s dismissal of the infringement claim.
2. Lord Justice Mummery, giving the judgment with which Lord Justice Rix and Lord Justice Peter Gibson agreed, held that the appellate approach applicable to an evaluative issue such as substantiality, explained in Designers Guild Ltd v Russell Williams (Textiles) Ltd [2001] FSR 113, applied equally to the commonplace issue under section 213(4). The trial judge had assessed expert evidence, compared designs, and applied an imprecise legal standard. The Court of Appeal should not reverse that evaluation absent a misdirection or error of principle.
3. The expression “design field in question” in section 213(4) is not defined by the Act. Its limits are matters of fact and degree. The relevant comparison concerns the shape or configuration of the design claimed. The nature, purpose, and material of the article to which the design is applied are not themselves part of the design under section 213(2), and do not necessarily confine the design field.
4. The statutory reference to the design field “at the time of creation” does not exclude designs first produced earlier or designs which have fallen into disuse. Existing historical designs may be considered where they could fairly and reasonably be regarded as within the design field at the date of creation. Their continued visibility in the built environment was relevant.
5. The deputy judge was entitled to compare the Nostalgia horn with numerous Victorian window horns, assess the similarities and differences from the viewpoint of the intended market, and conclude that the design was commonplace. Expert evidence could assist the court, but the objective judgment remained for the court itself.
6. Because the design was not protected, it was unnecessary to determine finally whether Magnet’s horn had been substantially copied, although the court indicated that it would have been reluctant to interfere with the deputy judge’s conclusion on copying. Scholes was ordered to pay 90 per cent of Magnet’s appeal costs. There was no order on the application for further evidence.

• Court of Appeal (Civil Division): Appeal dismissed. The Court upheld the order dismissing the infringement action.
• High Court, Chancery Division: On 5 November 1999, Mr Nicholas Underhill QC, sitting as a deputy High Court judge, held that the design was commonplace under section 213(4) of the Copyright, Designs and Patents Act 1988 and dismissed the action.