J Choo (Jersey) Ltd. v Towerstone Ltd. & Ors

For Community design infringement, the court identifies the informed user, considers the design corpus and compares the overall impression of the registered design with that of the alleged infringement. Detailed differences do not avoid infringement where the overall impression is the same. Similarity may justify an inference of copying for unregistered design right where independent creation is fanciful. The legislation provides no innocent-infringement defence for infringement of registered or unregistered Community designs. The proprietor is therefore entitled to damages or an account of profits, subject to the court’s ordinary control of appropriate relief.

The claimant sought summary judgment against the first defendant concerning alleged infringement of registered and unregistered Community design rights in a handbag. The other defendants had been dealt with separately. The issues were whether the defendant’s handbag produced the same overall impression as the registered design, whether copying could be inferred for the unregistered design right, and whether an innocent infringer could avoid damages or an account of profits. The court also considered whether an injunction was necessary where the defendant offered a perpetual undertaking.

1. Summary judgment. Summary judgment was appropriate because the defendant had no real prospect of successfully defending the claim. Mere speculation that further evidence might produce an arguable defence was insufficient.
2. Registered design infringement. Applying the approach explained in Procter & Gamble v Reckitt Benckiser [2007] EWCA Civ 936, the court identified the informed user as someone knowledgeable about handbag design, rather than an ordinary consumer or a designer. The informed user would know the design constraints and the relevant design corpus. The overall impression of the claimant’s design was a bucket bag with a double row of large threaded eyelets, a longitudinal clasp strap and lozenge-shaped handles integral with the eyelet design. The defendant’s bag created the same overall impression. Differences in texture, construction, the number of eyelets, the absence of particular fittings and other detailed features were either irrelevant, trivial or barely noticeable. The registered design was infringed.
3. Unregistered design right. The similarity between the bags, particularly the large number of identical features in a field offering substantial design freedom, made independent creation truly fanciful. Copying was therefore established for summary judgment purposes.
4. Financial remedies. Article 89 of the Council Regulation 6/2002 left the applicable sanction to national law. The United Kingdom legislation deliberately made damages generally available for Community design infringement, while providing a specific innocent-infringer exemption for UK registered designs. The court could not apply that exemption by analogy or treat Article 89(1)(d) as creating a discretionary defence. The same conclusion followed for unregistered Community design right. The claimant was entitled to an inquiry as to damages or, at its option, an account of profits.
5. Injunction and other relief. The defendant’s tendered perpetual undertaking was accepted in lieu of an injunction. The claimant had nevertheless been justified in commencing proceedings and seeking an injunction because the defendant had previously denied the sale and had not offered adequate protection. The relief sought in paragraphs 3 and 6 of the draft minute was appropriate, with paragraph 3 amended to reflect the undertaking.