Copyright, Designs and Patents Act 1988, section 226

Primary infringement of design right

Part III Design Right

(1)The owner of design right in a design has the exclusive right to reproduce the design for commercial purposes—

(a)by making articles to that design, or

(b)by making a design document recording the design for the purpose of enabling such articles to be made.

(2)Reproduction of a design by making articles to the design means copying the design so as to produce articles exactly or substantially to that design, and references in this Part to making articles to a design shall be construed accordingly.

(3)Design right is infringed by a person who without the licence of the design right owner does, or authorises another to do, anything which by virtue of this section is the exclusive right of the design right owner.

[F710 (3A)But design right in a design is not infringed where a person does, or authorises another to do, anything relating to an article that is made to the design if the article has been put on the market in the United Kingdom or the European Economic Area with the licence of the design right owner.F710]

(4)For the purposes of this section reproduction may be direct or indirect, and it is immaterial whether any intervening acts themselves infringe the design right.

(5)This section has effect subject to the provisions of Chapter III (exceptions to rights of design right owner).

Definitions used in section 226 5

design

1 (1) In this Act “design” means features of shape, configuration, pattern or ornament applied to an article by any industrial process, being features which in the finished article appeal to and are judged by the eye, but does not include—

(a)a method or principle of construction, or

(b)features of shape or configuration of an article which—

(i)are dictated solely by the function which the article has to perform, or

(ii)are dependent upon the appearance of another article of which the article is intended by the author of the design to form an integral part.

Defined in Sch.4 para.38 · see it in the full Act

(2) In this Part “design” means the design of ... the shape or configuration (whether internal or external) of the whole or part of an article.

Defined in s.213(2) · see it in the full Act

“design” has the meaning assigned to it by section 1(1) of this Act ;

Defined in Sch.4 para.38 · see it in the full Act
commercial purposes

(3) References in this Part to an act being done in relation to an article for “commercial purposes” are to its being done with a view to the article in question being sold or hired in the course of a business.

Defined in s.263(3) · see it in the full Act
article

“article” means any article of manufacture and includes any part of an article if that part is made and sold separately;

Defined in Sch.4 para.38 · see it in the full Act
design document

“design document” means any record of a design, whether in the form of a drawing, a written description, a photograph, data stored in a computer or otherwise;

Defined in s.263(1) · see it in the full Act
licence

(2)Where design right (or any aspect of design right) is owned by more than one person jointly, references in this Part to the design right owner are to all the owners, so that, in particular, any requirement of the licence of the design right owner requires the licence of all of them.

Defined in s.258(2) · see it in the full Act

(4)A licence granted by the owner of design right is binding on every successor in title to his interest in the right, except a purchaser in good faith for valuable consideration and without notice (actual or constructive) of the licence or a person deriving title from such a purchaser; and references in this Part to doing anything with, or without, the licence of the design right owner shall be construed accordingly.

Defined in s.222(4) · see it in the full Act

(3)A licence granted by a prospective owner of design right is binding on every successor in title to his interest (or prospective interest) in the right, except a purchaser in good faith for valuable consideration and without notice (actual or constructive) of the licence or a person deriving title from such a purchaser; and references in this Part to doing anything with, or without, the licence of the design right owner shall be construed accordingly.

Defined in s.223(3) · see it in the full Act

Cases considering section 226 31

A Fulton Company Ltd. v Totes Isotoner (UK) Ltd.

[2003] EWCA Civ 1514 · 4 November 2003

The court applied the infringement provisions to copying that produces articles exactly or substantially to a protected design. Copying a protected part can infringe even where the resulting article has a different overall design. (see paras [8]; [28]-[29]; [39])

L Woolley Jewellers Ltd v A & A Jewellery Ltd & Anor

[2002] EWCA Civ 1119 · 31 July 2002Interprets

The court interpreted the infringement test as requiring comparison with the whole protected design and an objective assessment whether the alleged infringing article was made exactly or substantially to that design. Copying a substantial part alone may not establish infringement. (see under “Submissions” and “Conclusions”)

Nabavi & Anor v Guild

[2002] EWCA Civ 316 · 14 March 2002Interprets

Defines the design-right owner’s exclusive right to reproduce the design for commercial purposes by making articles to it or recording it in a design document. The provision framed the infringement issue (see para [10]). Interprets substantial reproduction as copying the design so as to produce articles exactly or substantially to that design. The court held that the correct comparison was with the original designs and their protected shape or configuration (see paras [10], [61]-[70]). Cited in defining primary infringement by unauthorised conduct within the design-right owner’s exclusive rights. The appeal was resolved on originality and copying, so the subsection was not separately interpreted (see para [10]).

11 more judgments, and what each says about section 226, are in the case-law panel in the full Act.

Amendments and notes

1 notes from legislation.gov.uk

Amendments

  1. F710S. 226(3A) inserted (31.12.2023) by The Intellectual Property (Exhaustion of Rights) (Amendment) Regulations 2023 (S.I. 2023/1287), regs. 1(b), 4(3)