DKH Retail Ltd v H. Young (Operations) Ltd

UK unregistered design right may protect a specifically identified design embodied in the whole or part of an article. A pleading that lists significant features does not necessarily claim an abstract bundle of designs. For commonplace design, the court must identify the significant features and assess whether their particular arrangement was commonplace in the relevant design field at the relevant time. Individual commonplace features do not necessarily make their combination commonplace, especially in fashion items.

For infringement, the court compares the relevant designs and the defendant’s article through the eyes of the intended customer. Copying and substantial reproduction are distinct requirements, and differences may swamp elements taken from the claimant’s design. A Community design lacks protection only where appearance features are solely dictated by technical function. Additional damages for knowing infringement are not automatic.

DKH claimed UK unregistered design right and unregistered Community design in two overlapping parts of its Academy gilet: the front closing and hood arrangement, and the hood and collar arrangement alone. It alleged that H Young infringed those rights by importing and selling the Glaisdale gilet.

The principal issues were whether the pleaded subject matter constituted protectable designs; whether the designs were original, non-commonplace, novel and of individual character; whether technical-function, interface and complex-product exclusions applied; whether DKH owned the Community designs; whether the Glaisdale gilet was made substantially to the designs or produced the same overall impression; and when H Young had the requisite knowledge.

1. Subsistence and scope. The pleaded features identified two specific designs embodied in parts of the Academy gilet. They did not amount to a generalised claim to every abstract design possessing those features. The amendment to Copyright, Designs and Patents Act 1988, s.213(2), therefore made no difference on these facts.
2. Originality and commonplace design. Reliance on an earlier design did not defeat originality because sufficient skill, effort and aesthetic judgment had been shown. Applying the approach in Farmers Build Ltd v Carier Bulk Materials Handling Ltd [1999] RPC 13, the relevant comparison was with designs in the appropriate outerwear and casual-wear field. The court had to identify significant features and assess whether their particular arrangement was commonplace. Individual features serving a technical function could not simply be disregarded, and prior art showing features separately was insufficient. Neither design was commonplace.
3. Exclusions and Community-design ownership. The zip teeth were excluded by s.213(3)(b)(i), but were not claimed. The pleaded features were not a method or principle of construction. The Community designs were not solely dictated by technical function under art.8(1) of the Design Regulation. Both component parts remained visible during normal use, so the complex-product objection failed. Under art.27(1), the national law provisions on dealing with unregistered design rights applied, including s.223. The 2008 agreement assigned the future Community designs to Laundry Athletics, and the 2010 assignment transferred them to DKH. The July 2014 assignment provided an alternative basis.
4. Individual character and infringement. Each design had individual character. The Glaisdale gilet had been copied by reference to the Academy gilet. Viewed by the potential customer, the relevant parts were made substantially to the First and Second Designs. For Community design infringement, the differences did not produce a different overall impression on the informed user. Both UK and Community rights were infringed.
5. Knowledge and damages. H Young’s requisite knowledge was not established before receipt of the letter before action. It was imputed 14 days afterwards, following a reasonable investigation period. Additional damages under art.13(1) of the Enforcement Directive were refused; successful secondary infringement did not automatically justify such damages.