Copyright, Designs and Patents Act 1988, section 239

Undertaking to take licence of right in infringement proceedings

Part III Design Right

(1)If in proceedings for infringement of design right in a design in respect of which a licence is available as of right under section 237 or 238 the defendant undertakes to take a licence on such terms as may be agreed or, in default of agreement, settled by the comptroller under that section—

(a)no injunction shall be granted against him,

(b)no order for delivery up shall be made under section 230, and

(c)the amount recoverable against him by way of damages or on an account of profits shall not exceed double the amount which would have been payable by him as licensee if such a licence on those terms had been granted before the earliest infringement.

(2)An undertaking may be given at any time before final order in the proceedings, without any admission of liability.

(3)Nothing in this section affects the remedies available in respect of an infringement committed before licences of right were available.

Definitions used in section 239 3

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
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
the comptroller

“the comptroller” means the Comptroller-General of Patents, Designs and Trade Marks;

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

Cases considering section 239 4

Ultraframe (UK) Ltd. v Eurocell Building Plastics Ltd.& Anor

[2005] EWCA Civ 761 · 24 June 2005Limits

An undertaking may be accepted after the relevant design right has expired. The provision concerns a hypothetical licence limiting remedies rather than the grant of an actual licence, and may operate retrospectively for assessment of damages (see paras [104]-[119]). The present-tense reference to a licence available as of right does not confine the undertaking to the period before the design right expires. In context, the available licence relates to the infringement and serves to limit remedies (see paras [109]-[116]). The damages cap treats the hypothetical licence as operating retrospectively from before the earliest infringement. This supported allowing an undertaking after expiry of the right (see paras [110]; [114]). The express permission to give an undertaking at any time before the final order was inconsistent with an implied earlier deadline tied to expiry of the design right (see paras [106]; [113]). The subsection preserves remedies for infringements committed before licences of right became available. It supplies the express temporal limitation within the section (see paras [106]; [113]).

Freddy SPA v Hugz Clothing Ltd & Ors

[2020] EWHC 3032 (IPEC) · 19 November 2020Limits

An offer to take a licence of right limited the relief available, but did not make products non-infringing. The products therefore still breached the Settlement Agreement. (see para [130])

Ifejika v Ifejika & Anor

[2014] EWHC 2625 (IPEC) · 31 July 2014Interprets

The court applied the statutory cap under which recoverable sums would not exceed twice the amount payable under a settled licence, if the defendant had undertaken to take a licence. The provision did not reduce the sum assessed because the court found no realistic prospect of a licence below 1% of net profits. (see paras [34]-[36]) The court interpreted the provision as permitting the defendant to give the required undertaking at any time before the final order. It therefore treated the proceedings as if the undertaking had been given. (see para [35])

What each judgment says about section 239 is in the case-law panel in the full Act.