Legal Updates - Infringement of Registered Design Rights

Intellectual Property Law – UK Design vs Community Design – Infringement of Registered Design Rights, Alleged Innocent Infringer

The recent case of J Choo (Jersey) Ltd v Towestone Ltd and Others [2007] concerned a claim for infringement of registered, as well as unregistered, Community design rights. According to s.24B(1) of the Registered Designs Act 1949:

“In proceedings for the infringement of the right in a registered design damages shall not be awarded, and no order shall be made for an account of profits, against a defendant who proves that at the date of the infringement he was not aware, and had no reasonable ground for supposing, that the design was registered”.

The claimant in this case brought proceedings against the first defendant alleging infringement of both registered and unregistered Community design rights. The design rights were in relation to the claimant’s 'Ramona' handbag.

Although there was dispute as to the number of allegedly infringing handbags sold by the first defendant, it conceded that a number of infringing handbags had been sold from its shop situated on Oxford Street in London.

The defendant's bag shared various features of the registered design:

• It was a large bucket-style handbag;
• It had four panels; and
• It featured a double layer of threaded eyelets at the top.

The defendant alleged that at the time the bags were purchased it had had no reason to believe that they were infringing copies of the claimants registered design. The claimant then applied for summary judgment. The claimant sought damages or an account of profits.

The court had to reach a decision on whether the first defendant had a reasonable prospect of successfully defending the claim for infringement.

The defendant submitted that there had been no infringement due to the fact that there were a number of differences between the bags sold by them and the claimant's registered design. The principal differences being texture and the number of eyelets featured. Alternatively, the defendant submitted that as an innocent infringer it was not liable for damages or an account of profit.

The defendant further argued that parliament could not have intended that financial remedies should be available for innocent infringement of a Community registered design right. The defendant made this argument on the grounds that by virtue of s.24B of the Registered Designs Act 1949, as inserted by the Intellectual Property (Enforcement, etc) Regulations 2006, such remedies were not available for innocent infringement of a UK registered design right.

The application for summary judgement was duly allowed for the claimant on the following grounds:
 

• Firstly, even though the bags, if examined at a high level of detail, were slightly different, the overall impression given by each bag was deemed to be exactly the same.
• Secondly, that infringement of an unregistered design right required that copying had taken place. If the bags were looked at side by side the inference of copying was deemed to be overwhelming.
• Thirdly, there was no defence of innocent infringement regarding registered or unregistered Community design rights. Furthermore, even though there was no possible public policy reason for giving an innocent infringer a defence in respect of a UK registered design right, but not in respect of a Community registered design right, that was what the legislature had done.

For the above reasons the claimant was deemed to be entitled to damages or an account of profit.

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© RT COOPERS, 2008. This Briefing Note does not provide a comprehensive or complete statement of the law relating to the issues discussed nor does it constitute legal advice. It is intended only to highlight general issues. Specialist legal advice should always be sought in relation to particular circumstances.