A Fulton Company Ltd. v Totes Isotoner (UK) Ltd.

Unregistered design right may subsist in any recognisable aspect of the shape or configuration of the whole or part of an article. A claimant may prevent exact or substantial copying of that part, even where the defendant’s product has a different overall design and the copied part was not separately conceived or recorded. Protection remains subject to originality, commonplaceness and the must-fit or must-match exclusions under the Copyright Designs and Patents Act 1988. Design right is not confined to visually appreciable features, although the alleged part must be rationally discernible or recognisable.

Fultons sued Totes for infringement of registered and unregistered design rights in cloth cases for folding umbrellas. The registered-design findings were not challenged. The Patents County Court held that all five Totes variants infringed unregistered design right. In relation to types C–E, it found no infringement of the design of the whole case, but infringement of a design consisting of the case without one short side of the cuff. Totes appealed on the legal question whether unregistered design right could subsist in that part of the overall design, particularly where the defendant’s product constituted a different overall design.

1. Disposition. The appeal was unanimously dismissed. Lord Justice Jacob gave the judgment, with Lord Justice Kennedy and the Master of the Rolls agreeing. The registered-design findings were unaffected.
2. Section 213(2) of the Copyright Designs and Patents Act 1988 permits design right to subsist in any aspect of the shape or configuration of the whole or part of an article. The statute therefore allows protection for a recognisable part of an article, as well as for the article as a whole. A designer who copies only part of an original design may produce a different overall design, but that does not justify the copying.
3. The relevant part cannot be an arbitrary shape cut or notionally cut from an article. It must be rationally discernible or recognisable as part of the design. The court rejected the suggestion that protection was confined to visually significant features, although that qualification had been accepted in Volumatic Ltd v Myriad Technologies Ltd. Design right can extend to non-visible aspects, including aspects of semiconductor chips and electronic circuits, as illustrated by Mackie Designs v Boehringer [1999] RPC 717.
4. The statutory exclusions remain important. Features falling within the must-fit or must-match provisions are excluded at the stage of determining subsistence. Protection also requires originality and excludes designs that are commonplace in the relevant design field.
5. The fixation requirement in section 213(6) was satisfied because the overall slit design had been recorded in a design document or article. Each part of that recorded design was thereby recorded; a separately recorded cut-out design was unnecessary. The designer of the whole necessarily designed its parts, so the argument based on the qualifying-individual requirement in section 217 failed.
6. The claimant must formulate its pleading so that the part or aspect said to have been copied is identified. However, subsistence does not depend on the way the claim is framed. The court accepted the pleading point identified in Ocular Sciences Ltd v Aspect Vision Care [1997] RPC 289, while rejecting the description of the process as merely trimming the design-right claim.
7. The approach was consistent with A Fulton Co Ltd v Grant Barnett & Co Ltd [2001] RPC 36, Mark Wilkinson Furniture v Woodcraft Designs [1998] FSR 63 and Ultraframe v Fielding [2003] RPC 435. Totes had copied nearly all of a recognisable part of Fultons’ design. Types C–E therefore infringed the unregistered design right in that part.

1. Court of Appeal (Civil Division): dismissed Totes’ appeal on the question of subsistence and infringement of unregistered design right in part of an article.
2. Patents County Court: HHJ Fysh QC held the registered design valid and infringed by types A and B, and held that all five variants infringed unregistered design right. He found no infringement of the design of the whole case by types C–E, but found infringement of the pleaded design in the relevant part of the case.