Copyright, Designs and Patents Act 1988, section 228

Meaning of “infringing article”

Part III Design Right

(1) In this Part “infringing article”, in relation to a design, shall be construed in accordance with this section.

(2)An article is an infringing article if its making to that design was an infringement of design right in the design.

(3)An article is also an infringing article if—

(a)it has been or is proposed to be imported into the United Kingdom, and

(b)its making to that design in the United Kingdom would have been an infringement of design right in the design or a breach of an exclusive licence agreement relating to the design.

(4)Where it is shown that an article is made to a design in which design right subsists or has subsisted at any time, it shall be presumed until the contrary is proved that the article was made at a time when design right subsisted.

[F711 (5)Nothing in subsection (3) shall be construed as applying to an article which—

(a)may lawfully be imported into the United Kingdom by virtue of anything which forms part of assimilated law as a result of section 3 of the European Union (Withdrawal) Act 2018, or

(b)has been or is proposed to be imported into the United Kingdom after being put on the market in the European Economic Area by or with the licence of the design right owner.

(5A)In subsection (5)(a), the reference to assimilated law is to be read, until the coming into force of paragraph 2(6) of Schedule 2 to the Retained EU Law (Revocation and Reform) Act 2023, as a reference to retained EU law.F711]

(6) The expression “infringing article” does not include a design document, notwithstanding that its making was or would have been an infringement of design right.

Definitions used in section 228 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
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
exclusive licence

(1) In this Part an “exclusive licence” means a licence in writing signed by or on behalf of the design right owner authorising the licensee to the exclusion of all other persons, including the person granting the licence, to exercise a right which would otherwise be exercisable exclusively by the design right owner.

Defined in s.225(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
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

Cases considering section 228 6

A. Fulton Company Ltd v Grant Barnett & Company Ltd

[2000] EWCA Civ 513 · 5 October 2000

Applies the definition of infringing article by linking substantial making to the protected design and the conditions for domestic manufacture or importation. (see infringement section) Applies the substantial-design criterion to the imported handle and case. Both were objectively made substantially to the protected designs despite minor differences. (see made substantially to the designs section) Applies the provision concerning articles imported or proposed to be imported into the United Kingdom. (see infringement section) Applies the domestic-making comparison in determining whether the imported articles were infringing articles. (see infringement section)

J Mac Safety Systems Limited v Q Deck Safety Systems Limited

[2025] EWHC 2241 (Pat) · 4 September 2025

Applies the definition of an infringing article by reference to whether its making to the design infringed design right. The defendant’s mistaken view that the perimeter design was unenforceable did not negate knowledge under section 227 (see paras [202]-[203]; [263]).

Sonia Edwards v Boohoo.com UK Limited & Ors

[2025] EWHC 805 (IPEC) · 3 April 2025Defines

Applies the definition of an infringing article as an article whose making to the design infringed design right. This definition formed part of the conditional secondary-infringement analysis, but no liability was established because copying was not proved. (see paras [140]-[142])

What each judgment says about section 228 is in the case-law panel in the full Act.

Amendments and notes

1 notes from legislation.gov.uk

Amendments

  1. F711S. 228(5)(5A) substituted for s. 228(5) (31.12.2023) by The Intellectual Property (Exhaustion of Rights) (Amendment) Regulations 2023 (S.I. 2023/1287), regs. 1(b), 4(4)