Simon Barber v Steven Francis Wakefield & Ors

Registered design infringement is assessed by comparing the overall impressions of the registered and accused designs on the informed user, while disregarding features solely dictated by technical function. A product capable of being assembled in different ways may infringe where an infringing configuration is likely to be adopted by the end user. However, acts done privately and for non-commercial purposes, including making and using prototypes for testing, fall within the statutory exception. Publicity alone does not necessarily constitute an act of infringement. A finding of no completed infringement may nevertheless justify an injunction where commercial marketing of a substantially similar product is threatened.

The claimant alleged infringement of UK Registered Design No. 4028780, concerning the core structure of a letter box tool, by a prototype made by the defendants. The proceedings had originally been issued in the IPEC small claims track and were transferred to the court because registered design claims were excluded from that jurisdiction. By agreement, the trial was confined to six issues concerning validity, technical-function exclusions, overall impression, use, and possible joint liability.

The parties agreed that the design was new and had individual character. The court therefore considered the must-fit and technical-function exclusions, whether the prototype produced a different overall impression, whether it had been used within the meaning of the legislation, and whether any future commercial activity warranted relief.

1. Design comparison. The court applied the structured approach summarised in Cantel Medical (UK) Limited v ARC Medical Design Limited [2018] EWHC 345 (Pat), as adapted in Marks and Spencer plc v Aldi Stores Ltd [2023] EWHC 178 (IPEC). The sector, informed user, designer’s freedom, design corpus and overall impressions were relevant. Features solely dictated by technical function were to be ignored.
2. Must-fit and technical function. Section 1C(2) of the Registered Designs Act 1949 did not apply. Although a letter box tool had to pass through a letter box and make close contact with objects inside, that did not require the precision of a key fitting a keyhole. The court adopted the general point in Action Storage Systems Limited v G-Force Europe.Com Ltd [2016] EWHC 3151 (IPEC), while noting the statutory distinction between registered and unregistered designs. Section 1C(1) also had no bearing because there was significant room for variation beyond the necessary U-shape.
3. Configurations and overall impression. Where an accused product is likely to be used in an infringing configuration, that configuration is sufficient for infringement even if another theoretical configuration would not infringe. The prototype’s likely configuration did not create a different overall impression from the registered design, particularly in light of the design corpus. Its indistinct logo, colour and attachable handle did not alter the comparison.
4. Acts of infringement and exceptions. Making and using the prototypes, and possibly supplying one for testing, fell within section 7 of the Registered Designs Act 1949, but were done privately and for non-commercial purposes. They were therefore excluded by section 7A(2)(a). The court did not decide whether testing market response also fell within the experimental-purpose exception in section 7A(2)(b). Public media posts and trade-fair display were not themselves acts listed in section 7(2)(a).
5. Disposition and relief. There had been no infringement. The court nevertheless granted an injunction because commercial marketing of tools having the same or sufficiently similar shape as the prototype would infringe during the remaining term of the registered design. No damages inquiry or account of profits was appropriate, and there was no order as to costs.