Fairfax & Favor Limited & Ors. v The House Bruar Limited & Ors.

UK unregistered design right protects a design that is original and not commonplace in the relevant design field. The commonplace exclusion is applied narrowly. A design must be assessed as a whole; an obscure similar article, or a collection of individually commonplace features, will not necessarily defeat protection.

Infringement requires copying and making articles exactly or substantially to the design. For a registered design, validity and infringement depend on novelty, individual character and the overall impression on the informed user, taking account of design freedom and the design corpus. Small changes may leave a design substantially reproduced, but a materially different feature in a visually significant part may avoid infringement.

The claim concerned a knee-length ladies’ boot design known as the Heeled Regina. The claimants relied on a registered Community design and UK unregistered design right in the whole boot and in two partial designs.

The defendants sold three versions of boots allegedly copied from the Heeled Regina. The issues were subsistence and ownership of UK unregistered design right, copying, primary and secondary infringement, validity and infringement of the registered design, and the appropriate orders.

1. UK unregistered design right. The Heeled Regina design was created in November 2014, whereas the two partial designs were tested as at October 2014. The judge applied the principles in Original Beauty Technology Co Ltd v G4K Fashion Ltd, Farmers Build Ltd v Carier Bulk Materials Handling Ltd, A Fulton Co Ltd v Grant Barnett & Co, Ocular Sciences Ltd v Aspect Vision Care Ltd (No 2), Lambretta Clothing Co Ltd v Teddy Smith (UK) Ltd, Action Storage Systems Ltd v G-Force Europe.Com Ltd and Ultraframe (UK) Ltd v Eurocell Building Plastics Ltd.
2. The elasticated rear panel covered by full-length leather strips was an original and visually significant feature. The Heeled Regina was not commonplace. The Cejudo boot was too obscure to be taken into account for UK unregistered design right. The partial designs lacked protection because their combination of known features was commonplace.
3. Under sections 213 and 226 of the Copyright, Designs and Patents Act 1988, infringement required copying and making articles exactly or substantially to the design. Versions 1 and 2 were deliberately copied and made substantially to the Heeled Regina. Version 3 was copied, but its relocated rear panel produced a materially different design and was not made exactly or substantially to the design. Had the partial designs been valid, Versions 1 and 2 would have infringed both, and Version 3 would have infringed the second partial design.
4. Registered design. Applying the approach in Cantel Medical (UK) Ltd v ARC Medical Design Ltd, and the informed-user guidance in Samsung Electronics (UK) Ltd v Apple Inc, the relevant sector was ladies’ boots, the informed user was a buyer or wearer, and the designer had a wide degree of freedom. The rear panel distinguished the design from the prior art and gave the registered design individual character.
5. The registered design was valid. Versions 1 and 2 did not produce a different overall impression and infringed. Version 3 produced a different overall impression because of the placement and appearance of its rear and inner-leg panels, and did not infringe.
6. The defendants also had sufficient knowledge for secondary infringement under section 227(1) of the Copyright, Designs and Patents Act 1988. The parties were directed to agree, or make submissions on, the appropriate form of order.

Not an appeal. The judgment followed a trial of the infringement claim.