KF Global Brands Limited v Lead Wear Limited & Ors

UK unregistered design right requires originality both in the copyright sense and in the statutory sense that the design is not commonplace. A minor alteration to an existing design does not automatically create a new design right in the design as a whole. The court must assess whether the alteration is relatively minor. Design-right infringement also requires the relevant act, or authorisation of that act, to occur in the United Kingdom. A letter before action may establish a purchaser’s reason to believe that goods are infringing, but only where it gives sufficient particulars of the alleged right and infringement.

The claimant alleged UK unregistered design right in cargo trousers and claimed that the defendants’ trousers infringed under sections 226 and 227 of the Copyright, Designs and Patents Act 1988. The claimant also sought additional damages under section 229(3). The court considered whether the pleaded design was original, whether the defendants’ products were made to that design, whether any relevant act or authorisation occurred in the United Kingdom, and whether the second defendant had reason to believe that the goods were infringing.

The court found that the pleaded design was substantially copied from the Aldi design and differed only by replacing pen loops with a pen pocket.

1. Originality. A design must be original both because it originates with its author and because it is not commonplace in the relevant design field. The statutory originality requirement is distinct from copyright originality.
2. Minor alterations. Where a new design is produced by changing an existing design, the court must decide whether the changes are relatively minor. If they are, no new design right arises in the design as a whole, although design right may arise in the changed parts. The principle prevents the artificial prolongation of design-right protection by small alterations.
3. The pleaded BKS-001 design was copied from the Aldi trousers. The only material difference was the replacement of pen loops with a pen pocket. That alteration was too minor to create a new design right in the trousers as a whole. The claimant did not rely on design right in the pen pocket alone. The claim therefore failed on subsistence.
4. Primary infringement. Section 226 requires copying so as to produce articles exactly or substantially to the design. This is distinct from the copyright test. Authorisation requires the grant or purported grant of authority to do the relevant act. The defendants’ products were made in Bangladesh, and the only potential authorisation concerned manufacture there. The territorial requirement was therefore not satisfied.
5. Secondary infringement. The issue did not arise because there were no infringing articles. Nevertheless, the court held that the first and third defendants would have known of the infringement if the products had been infringing. The second defendant had no reason to believe that they were infringing merely because they were cheap or because he had not conducted a Google search. The letter before action lacked sufficient particulars and merely put him on notice that a claim was being made.
6. The action was dismissed. The court made no finding on additional damages.