L Woolley Jewellers Ltd v A & A Jewellery Ltd & Anor

Infringement of design right under Copyright, Designs and Patents Act 1988, section 226(2), requires comparison between the alleged infringing article and the whole design protected by design right. Copying a part, even a substantial part, may not suffice. The court must ask whether the article was made exactly or substantially to the protected design, assessed objectively through the eyes of the person to whom the design is directed. The copyright test of copying a substantial part is distinct and may be irrelevant to design right infringement.

The respondent manufactured jewellery incorporating a pendant design, LMC 125. The Patents County Court found that the design’s combination of a bail and a repeating heart motif was original, that the bail had been copied, and that the appellants’ pendant infringed the respondent’s design right. It granted declaratory, injunctive, delivery-up and inquiry orders, while dismissing copyright and patent claims.

The appellants challenged the findings and the judge’s approach to infringement. The central issue was whether copying the bail, treated as a substantial part of the design, established infringement under section 226(2).

1. The appeal was allowed. The declaration of infringement was set aside, and the issue of design right infringement was remitted to the Patents County Court.

2. Under section 226(2) of the Copyright, Designs and Patents Act 1988, reproduction by making articles to a design means copying so as to produce articles exactly or substantially to that design. The relevant comparison is between the alleged infringing article and the whole design in which design right subsists.

3. The court distinguished this inquiry from the copyright question whether a substantial part of a copyright work has been copied under section 16(3)(a). Copying a part of a design, even a substantial part, may not amount to design right infringement. The overall design must be considered.

4. The trial judge had applied the copyright substantiality approach and had not directed himself to the different statutory test for design right. That error required reconsideration by the trial judge. The Court of Appeal declined to substitute its own conclusion because neither counsel had submitted that it could do so.

5. The court accepted the premise that a combination of commonplace elements may produce an original design that is not itself commonplace. The judge’s factual findings were otherwise not shown to be against the weight of the evidence.

6. Lady Justice Arden added that the trial judge might need to consider whether design right law protects a single detailed design rather than a design with many features. The observation in Designers Guild Ltd v Russell Williams Textiles Ltd was made in the context of copyright and of comparing abstract and detailed artistic works; rigid classification should rarely be insisted upon.

• Court of Appeal (Civil Division): allowed the appeal, set aside the declaration of infringement and remitted the design right infringement issue to the Patents County Court. There was no order as to the costs of the appeal.
• Patents County Court: declared that manufacture of the appellants’ jewellery infringed the respondent’s design right in LMC 125 and made consequential orders. The judgment also dismissed the copyright and patent infringement claims.