Action Storage Systems Ltd v G-Force Europe.Com Ltd & Anor

UK unregistered design right protects the specific design embodied in an article or part of an article, rather than an abstract concept or general method of construction. A feature is excluded as a “must fit” feature where it enables precise interaction between articles so that either article can perform its function; it need not be the only possible design or the article’s sole function. For infringement, the claimant must establish copying and then that the copied articles are exactly or substantially to the protected design. Features excluded by Copyright, Designs and Patents Act 1988, s 213(3), are disregarded, but features lacking originality or being commonplace remain part of the comparison if the design as a whole remains protected. A defendant’s mistaken legal belief that no design right exists does not prevent knowledge for secondary infringement where the relevant facts are known.

The claimant supplied plastic school lockers under the eXtreme Lockers brand. The defendants launched SuperTuff lockers after considering the claimant’s products. The claimant alleged infringement of UK unregistered design rights in the lockers as a whole and in specified features.

The defendants argued that the claimed features were abstract, lacked originality, were commonplace, constituted methods or principles of construction, or were excluded “must fit” features. They also disputed secondary infringement before a reasonable period had elapsed after notice. The court determined subsistence, exclusions, copying, substantial similarity, primary infringement and knowledge.

1. Claim succeeded. The court found primary and secondary infringement in the overall locker design and in the designs of the overall dimensions and proportions, the oval label indentation, the side panel and the rear panel. The interior door design was not infringed.
2. The claimant’s pleading, fairly read, claimed only designs embodied in the eXtreme lockers and their identified parts. Any ambiguity should have been addressed by a request for clarification before trial.
3. The court did not need to decide the transitional effect of s 1(1) of the Intellectual Property Act 2014. The defendants’ commonplace-design case failed because they did not establish that the prior art was current in the thinking of designers in the relevant field. A combination of individually commonplace features may itself be non-commonplace.
4. A method or principle of construction is not established merely because a feature performs a function. The specific ribs and rear panel were protected designs, and alternative designs could achieve the same functions.
5. The “must fit” exclusion applied to the top and bottom panels. Their shapes afforded sufficient precision in the interrelationship between stacked lockers to promote stable interaction. The panels need not provide the only possible means of stacking.
6. For primary infringement, the claimant had to prove copying and then that the copied articles were exactly or substantially to the claimant’s design. Features excluded under s 213(3) were disregarded, while commonplace or non-original features remained relevant to the comparison where the design as a whole remained protected.
7. The defendants’ design proposal showed copying, and the SuperTuff lockers were substantially to the overall eXtreme design. Secondary infringement arose after 27 June 2014, following a 21-day investigation period after notice. Before that date, the defendants knew the relevant facts; their honest but mistaken belief that the designs lacked enforceable protection did not prevent knowledge or reason to believe under s 227.
8. The court recommended that design-right pleadings identify significant features, the alleged presence of those features in the accused article, relevant prior art, and the issues concerning originality, commonplace design and statutory exclusions.

First-instance decision. No prior or appellate decision was stated in the judgment.