What is the definition of "design" in s.213 (2) of the Copyright, Designs and Patents Act 1988 following the deletion of "any aspect of" from the sub-section

Jane Lambert

In DKH Retail Ltd v H. Young (Operations) Ltd the claimant, which claimed design rights and unregistered Community design in relation to the front portion and hood of a range of gilets sold under the product name Academy under the Superdry brand sued the defendant for importing and selling a range of Glaisdale gilets under the Animal brand. The defendant raised the usual defences on subsistence, ownership and infringement. 

This case is interesting because it is the first judicial analysis of the effect of the deletion by s.1 (1) of the Intellectual Property Act 2014 of the words "any aspect of" from the definition of "design" in s.213 (2) of the Copyright, Designs and Patents Act 1988. I had discussed that deletion in "How the Intellectual Property Act 2014 will change British Unregistered Design Right Law" 11 June 2014 and "The Intellectual Property Bill 2013" 28 May 2013.  Even though the case began before the Intellectual Property Act 2014 received royal assent both parties agreed that "design" for the purposes of this litigation had to be construed in accordance with the new definition:
"In this Part “design” means the design of ... the shape or configuration (whether internal or external) of the whole or part of an article."
Judge Hacon began his task by determining what the deleted words used to mean.  He considered Lord Justice Jacob's discussion at paragraphs [22] and [23] of Dyson Ltd v Qualtex (UK) Ltd [2006] RPC 31, [2006] EWCA Civ 166 and concluded at paragraph [12] of his judgment that
"........ the reason for the extreme width of the definition of 'design', as Jacob LJ saw it, was that the definition of 'design' including the shape or configuration of any part of an article, in contrast with copyright which subsists in the copyright work as a whole. Jacob LJ appears to suggest that "any aspect of" in s.213(2) has a limiting function, that is to say it excludes from the definition of 'design' a feature which is neither discernible nor recognisable."
The problem  with that interpretation was that the deletion of "any aspect of" from s.213 (2) would extend the scope of what qualifies as a design. That would be inconsistent with paragraph 10 of the explanatory note which stated
"Subsection (1) limits the protection for trivial features of designs, by making sure that protection does not extend to "any aspect" of the shape or configuration of the whole or part of an article. It is expected that this will reduce the tendency to overstate the breadth of unregistered design right and the uncertainty this creates, particularly in relation to actions before courts."
Counsel for the claimant had argued that the deletion of "any aspect of" from the definition had made no difference to the definition of "design" at all but the judge rejected that contention as  contrary to the usual principles of statutory construction. He thought he must assume that the subsection makes a difference and, guided by the explanatory note, he must further assume that the scope of what can constitute a design under s.213 (2) has narrowed.  He said at paragraph [14]:
"The words "any aspect of" permitted variations of what a party could claim as a design which are no longer available. Spotting why that might be is not easily done just by looking at the words of s.213 (2)."
The judge also considered the definition of "Community design" in art 3 of the Community Design Regulation and while there was
"no reason to suppose that Parliament intended the new definition of 'design' in s.213 (2) to be identical to that in the Design Regulation and plainly it isn't ...... for policy reasons of consistency where that can be achieved, there is much to be said for treating "the design of the shape or configuration (whether internal or external) of the whole or part of an article" as having a meaning as close as possible to "the appearance of the whole or part of a product"
"One route to such a result would be to interpret the effect of s.1 (1) of the 2014 Act as being that it no longer permits a claim to unregistered design right to extend to designs other than those specifically embodied in all or part of the claimant's article, i.e. no more UK unregistered design rights in abstract designs (see above)."
In any event, it made no difference to the outcome of the claim before His Honour.

The rest of the case turned very much on its own facts. The judge concluded that design right and unregistered Community design  did subsist in the features of the gilet relief upon, that such design rights belonged to the claimant and that those rights had been infringed by importation and sale of the gilet. However, the defendants only had knowledge that the gilet was an infringing article 14 days after receiving the letter before action and for that reason the judge would not award additional damages pursuant to art 13 (1) of the Entitlement Directive.


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