J Mac Safety Systems Limited v Q Deck Safety Systems Limited

For UK unregistered design right, originality under section 213(1) of the Copyright, Designs and Patents Act 1988 has the same meaning as originality in copyright. The relevant question is whether the design expresses the author’s intellectual creation through free and creative choices. Functional constraints do not prevent originality unless they leave no room for such choices.

The interface exclusion applies to precise features designed to enable a stable and sufficiently precise interaction between articles. It does not generally exclude shapes merely because they contain voids or can accommodate another article. Infringement requires copying and production of an article exactly or substantially to the protected design, assessed objectively by reference to the overall design after disregarding excluded features.

The claimant owned UK unregistered design rights in four safety-decking designs: a 1x1 panel, a 0.75x1 panel, a panel-perimeter design and a pin design. The defendant developed and supplied competing Q Deck panels and pins after purchasing substantial quantities of the claimant’s Macdeck System.

The court determined subsistence, originality, commonplace features, statutory exclusions, the date on which articles made to the designs were first made available for sale or hire, copying, substantial similarity and secondary infringement. The central issues were whether the Q Deck Components were copied and made exactly or substantially to the Macdeck Designs, and whether the Macdeck System first became commercially available in 2016 or 2017.

1. Subsistence and originality. The Macdeck Designs were original under section 213(1) of the Copyright, Designs and Patents Act 1988. The applicable test was the author’s own intellectual creation, expressed through free and creative choices. Functional considerations did not deprive the designs of originality because sufficient choices remained in their overall shape and configuration.
2. The designs were not commonplace as a whole. Certain individual features, including square or rectangular board shapes and a pin dimple, were commonplace, but that did not make the combinations commonplace.
3. The Macdeck 1x1 Panel Perimeter Design was a sufficiently circumscribed contiguous part of an article. The pleaded designs did not amount to methods or principles of construction.
4. The interface exclusion in section 213(3)(b)(i) applied to particular features, including panel height, straight edges, certain voids, the lower disc of the pin and the relevant pin-shaft dimensions. It did not apply to features lacking the necessary precision and stability of interaction, including hand holds, surface bumps, branding features in the relevant analysis, and various aperture shapes.
5. Under section 216, articles made to the designs were made available for sale or hire in 2016. Commercial trials and demonstrations using existing, tested articles formed part of the process of making the products available, even though they were supplied without payment and before mass manufacture.
6. Under section 226, copying and substantial reproduction were linked but remained analytically distinct. The Q Deck 1x1 and 0.75x1 Panels had been extensively copied, but their overall differences meant they were not made exactly or substantially to the corresponding Macdeck designs. The Q Deck 1x1 Panel was, however, made substantially to the Macdeck 1x1 Panel Perimeter Design. On the alternative analysis, the Q Deck Pin was made exactly or substantially to the Macdeck Pin Design.
7. The claim for primary and secondary infringement therefore succeeded only in relation to the Macdeck 1x1 Panel Perimeter Design and the Q Deck 1x1 Panel. The passing-off claim also succeeded, with the defendant submitting to judgment. Issues concerning damages and the form of order were left for a later hearing.