Neptune (Europe) Ltd v Devol Kitchens Ltd

UK unregistered design right protects the physical manifestation of a design, not an abstract idea, method or principle of construction. Infringement requires an objective comparison of the allegedly infringing article with the article or document embodying the design. Copying a feature or combination of features is insufficient where the pleaded design is the article as a whole. The differences as well as the similarities must be assessed. The 2014 amendment removing “any aspect of” from the statutory definition of design was not retrospective as to accrued causes of action for earlier infringements, but applied to later infringements. Minor modifications to an existing design do not create a new design right in the design as a whole where that would extend the statutory period. The pleaded unregistered designs were not infringed, and the Community registered design was valid but not infringed.

Neptune claimed infringement of UK unregistered design rights in six selected kitchen units from its Chichester range, and infringement of a Community registered design. Devol relied on its Classic and Shaker ranges and denied copying and infringement. The court also considered whether certain features could be excluded from the pleaded designs, the effect of the 2014 amendment to the definition of “design”, the distinction between ideas and their physical manifestation, and the treatment of functional and decorative features.

The unregistered design claims concerned base cabinets, curved end cabinets, wall cupboards, a wine rack and drawer cabinets. The registered design claim concerned a drawer unit.

1. UK unregistered design right. The court rejected the attempt to equate design right infringement with copyright infringement. Under section 226 of the Copyright, Designs and Patents Act 1988, the relevant question was whether the alleged infringing article was made exactly or substantially to the design, assessed objectively by comparison with the article or document embodying it. Because Neptune relied on each item of furniture as a whole, it was necessary to consider the overall designs, including both similarities and differences. Copying a feature, an idea, or a combination of features not pleaded as a design was insufficient.
2. Design right protects the physical manifestation of an idea. A claim stated at too high a level of generality may be excluded as a method or principle of construction. The court also held that the configuration claimed by Neptune could not be separated from shape where the pleaded design relied on both. The “must fit” exclusion did not apply to the ears on an exposed end unit because there was no separate article to which the unit was connected.
3. The amendment to section 213(2) removing “any aspect of” was substantive rather than merely declaratory. It did not extinguish accrued causes of action for infringements committed before 1 October 2014, but applied to acts committed after that date. “Aspects” included disembodied recognisable features, whereas “parts” were concrete identifiable parts of the design. Neptune could rely on the whole designs without the features it sought to exclude.
4. The court accepted that some ideas, including saw-tooth shelving and curved end cabinets, had been derived from knowledge of the Chichester range. Nevertheless, their physical manifestations were materially different. Having regard to all relevant circumstances, including derivation, similarities and differences, none of the Shaker units infringed the asserted unregistered design rights.
5. For the Community registered design, the court applied the informed-user overall-impression approach. Similarities common to the design corpus had little weight, while departures from it had greater weight. The registered design was valid because its distinctive curved cutaway gave it individual character, but the different cutaway and other differences meant that the Shaker drawer unit created a different overall impression and did not infringe.
6. The claim and counterclaim were dismissed.