Raft Ltd v Freestyle of Newhaven Ltd & Ors

Design right subsists where a designer has contributed sufficient skill and effort to create an original design, even though the designer was influenced by earlier designs. Minor amendments to an existing design may create rights in the amended part without creating a new original design in the article as a whole.

For secondary infringement, the seller must have knowledge or reason to believe that the article is infringing. A director who knowingly arranges the relevant acts may be jointly liable where he actively cooperates in, and intends to bring about, the tortious acts.

Passing off based on product shape or get-up requires evidence that the relevant public relies on that appearance as a badge of origin. Similarity, even combined with identical product names, does not itself establish misrepresentation.

Raft manufactured and retailed furniture. It alleged that Freestyle manufactured, and Highly Sprung sold, sofas infringing Raft’s UK unregistered design right in two Loft sofa designs. Raft also alleged passing off based on sofa shapes, style names and the external appearance of the defendants’ neighbouring store.

The second defendant counterclaimed that Raft infringed UK unregistered design right in the Combi sofa. The court determined subsistence, ownership and infringement of the relevant designs, the liability of the defendants as joint tortfeasors, and whether the evidence established the alleged passing-off misrepresentations.

1. Design right in the Loft sofa. Under Copyright, Designs and Patents Act 1988, s.213(1), originality requires both creation by the designer rather than slavish copying and sufficient skill and effort. The threshold is low. The wide-arm Loft design satisfied that requirement, notwithstanding influence from earlier sofa designs. Raft owned the design right because the design had been created by its employee in that capacity.
2. The later reduction in arm width was too minor and localised to create a newly original design in the skinny-arm Loft sofa as a whole. No separate claim was made for the arm alone.
3. Freestyle admitted manufacturing sofas to the wide-arm Loft design and therefore infringed. Highly Sprung’s admitted sales constituted secondary infringement under s.227. Mr Horsnell’s belief that the sofas copied another design did not assist him. He knew that the sofas copied the Loft design and had ample reason to believe that they were infringing articles.
4. Joint tortfeasance. Applying the approach explained in Fish & Fish Ltd v Sea Shepherd UK Ltd [2015] UKSC 10, active cooperation intended to bring about the tortious act, beyond a de minimis contribution, was required. Mr Horsnell took the relevant decisions for both companies and intended the manufacture and sale of the sofas. All three defendants were jointly liable.
5. Passing off. The three criteria stated in Reckitt & Coleman v Borden [1900] 1 WLR 491 applied. Raft established goodwill, but the evidence did not establish a relevant misrepresentation. Reliance on product shape or get-up must operate independently of any trade name. Customer confusion about identical products, or confusion caused by an advertising board outside the defendants’ store, did not prove that the goods came from the same source or that the businesses were connected. The passing-off claims therefore failed.
6. Counterclaim. The Combi design was original and not shown to be commonplace. However, the design right belonged to Freestyle of London because Mr Horsnell created it in the course of his employment, or alternatively held it on trust for that company. No effective written assignment transferred the right to the defendants. The counterclaim therefore failed for lack of ownership. In any event, the Manhattan sofa was sufficiently different that it was not substantially to the Combi design.
7. Raft’s claim for infringement of the wide-arm Loft design succeeded. The claims concerning the skinny-arm Loft design and passing off, and the counterclaim, were dismissed.