When all design rights have expired, passing off remains

Last week's decision of Mr Justice Floyd (Chancery Division, England and Wales) in Numatic International Ltd v Qualtex UK Ltd [2010] EWHC 1237 (Ch) is actually a passing-off case, not a design infringement action. Accordingly it will not be subjected to detailed analysis here. However, the design dimension to this case is not insignificant. As the judge said:

"7. ... Qualtex formed the intention to have manufactured and to sell a replica of the Henry cleaner. Qualtex concluded that, provided that they chose a design in which all relevant intellectual property rights (such as all the various forms of national and community, registered and unregistered design rights) had expired, they should be free to do so, provided that they did not use any Numatic trade mark such as the name Henry. In this they are absolutely right. There is no point in having design rights with expiry dates if traders are not free to market replica products thereafter. The only qualification to this is that they must not market a product in such a way as to lead to passing off".

Alas for Qualtex, that was its undoing.