Landor & Hawa International Ltd v Azure Designs Ltd

Design right is not excluded merely because a design performs a function or its components have functional purposes. Under Copyright, Designs and Patents Act 1988, s 213(3)(a) prevents a monopoly in a method or principle of construction. A design remains protectable where the same practical result can be achieved by materially different appearances and the claim concerns a particular appearance rather than a broad principle.

The corresponding exclusion in art 8.1 of Council Regulation (EC) No 6/2002 is also construed narrowly. Functional features remain eligible where their appearance is not solely dictated by technical function. A quia timet injunction may be granted where an earlier undertaking not to infringe has been withdrawn before trial and a present threat exists. The court adopts a pragmatic, case-by-case approach.

Landor designed an expander section for a rigid suitcase and claimed UK unregistered design rights and Community unregistered design rights in the arrangement of piping and zippers. Azure imported, marketed and sold allegedly infringing suitcases.

Following a hearing in the Patents County Court, His Honour Judge Fysh QC decided the substantive issues in Landor’s favour, leaving only the quantification of damages outstanding. Azure appealed on three issues: whether the design was excluded from UK protection as a method or principle of construction; whether it was excluded from Community protection as dictated solely by technical function; and whether a quia timet injunction was justified despite Azure’s pre-action undertaking, which was later withdrawn.

Disposition. Neuberger LJ gave the principal judgment. Wilson LJ and May LJ agreed. The appeal was unanimously dismissed, and the Patents County Court’s conclusions were upheld on all three issues.

1. UK unregistered design right. Section 213(3)(a) of the Copyright, Designs and Patents Act 1988 is directed to preventing a monopoly in a method or principle of construction. Mere functionality is insufficient. The exclusion does not apply simply because a design serves a functional purpose, is primarily functional, or because each component has a functional purpose. The reasoning in A Fulton Co Ltd v Grant Barnett Ltd [2001] RPC 257 and Isaac Oren v Red Box Toy Factory [1999] FSR 785 supported protection for a particular visual embodiment rather than a general principle.
2. The evidence showed that alternative piping and zipper arrangements could achieve the same practical result with different appearances. The design was not understood by the notional luggage-manufacturer addressee as allowing wide variation. The judge was therefore entitled to find that the exclusion did not apply. Section 226(2) also recognises copying which produces articles exactly or substantially to the design, so the possibility of infringing variants did not establish that the design claimed a construction principle. It was permissible, though requiring great caution, to use the interaction between exclusion and infringement as a squeeze argument; that point was not necessary to the result.
3. Community unregistered design right. Article 8.1 of the Council Regulation (EC) No 6/2002 requires a narrow approach to features whose appearance is solely dictated by technical function. The wording and purpose of the trade mark provisions considered in Koninklijke Phillips Electronics NV v Remington Consumer Products Ltd [2003] RPC 2, and the different statutory context considered in Amp Incorporated v Utilux Products Ltd [1972] RPC 103, could not safely be transposed. The Advocate-General’s comparison in the same matter [2001] RPC 38 supported the conclusion that a functional design may remain protected where the same function can be achieved by another form. The judge’s finding that the design contained non-functional and capricious features therefore disposed of the challenge.
4. Quia timet injunction. If Azure’s clear pre-action undertaking had remained in force, an injunction would have been inappropriate. But Azure withdrew it during the proceedings and made clear that it threatened to resume trading. The court should assess such applications pragmatically and case by case. It was reasonable to seek relief at the outset in light of Azure’s denial of the design rights and threats counterclaim, although continued effectiveness of the undertaking could have led to refusal of the injunction and an adverse costs order.

• Court of Appeal (Civil Division) — [2006] EWCA Civ 1285: dismissed Azure’s appeal and upheld the lower court’s conclusions on UK design right, Community design right and the quia timet injunction.
• Patents County Court: His Honour Judge Fysh QC decided the substantive disputes in Landor’s favour, with damages quantification remaining outstanding.