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  • Design right infringement all locked up

    In a recent case on UK Unregistered Designs Rights (“UK UDR”), IPEC considered what rights resided in plastic lockers.

    Action Storage Systems Limited (“Action”) brought a claim against G-Force Limited and Fletcher European Containers Limited (“Defendants”) for the infringement of its UK UDR in its plastic storage locker.

    As is often the case in design right proceedings, the Defendants attacked the validity of the design on a number of grounds.

    Firstly, in their view, the design lacked originality in that it was copied from prior designs. The Defendants identified one earlier design to show that the design lacked originality.

    However, at the outset the Defendants readily accepted that five features of the design were original. These were: the overall dimensions and proportions, the shape and dimensions of the raised section on the top, the shape and dimensions of the ribs at the side, the shape of the border and inset squares at the rear and the shape and dimensions of the inset section at the base.

    The Defendant’s argument that the design resulted from a method or principle of construction was also unsuccessful as it was evident that the functions can be achieved by a number of different designs.

    Finally, the Defendant was partially successful in its argument that the top and bottom of the locker should be excluded from UK UDR. As the lockers were designed so that they were stackable, the top and bottom of the lockers connected so as to prevent the lockers from toppling over. As such, even though this wasn’t a secure fit, the Defendants ‘must fit’ argument was successful in relation to these features.

    As a result, the Defendants were found to have infringed Action’s UK UDR in: i) the overall dimensions and proportions of the lockers; ii) the shapes and oval indentation for applying the label on the front of the locker; iii) the shape of the side of the locker and iv) the shapes of the rear of the locker.

    Perhaps the most pertinent takeaway from this case is the use of design charts in the proceedings to identify the significant features of designs. The design charts submitted by Action outlined the features of the earlier design, Action’s design and the Defendant’s designs. Action was praised for using these design charts which the Judge felt were ‘extremely useful and (I) strongly suggest that all litigants in design right cases attempt something similar’.

    This case highlights that UK UDR can be handy tool for designers in enforcing its IPRs. Stobbs is proud to advise a number of designers in relation to the protection and enforcement of their designs. If you would like advice on any of the issues could here, please feel free to give us a call.