Readers' queries

Andrew Clay (Hammonds LLP) has written in with an apparent difficulty concerning the UK's somewhat complex and convoluted unregistered design legislation. He says:

"1. section 216(1) of the Copyright, Designs and Patents Act (CDPA) provides what amounts to primary infringement of UK unregistered design right. To infringe, you have to make an article to the design or make a drawing with a view to making an article to the design but -- and here is the problem-- in so doing you have to reproduce the design "for commercial purposes", which term is defined in 263(3) as being an act done "with a view to the article in question being sold or hired in the course of a business".

This appears to mean that, if you make machinery etc only to use it yourself, that act can't be an infringement of the UK unregistered design right.

Also if your liquidator etc then decides to sell it, that won't be an infringment under 227(1) of the CDPA, given the combined effect of the foregoing and sections 228(1) and (2)".

For the record, under s.227(1)

"Design right is infringed by a person who, without the licence of the design right owner (a) imports into the United Kingdom for commercial purposes, or (b) has in his possession for commercial purposes, or (c) sells, lets for hire, or offers or exposes for sale or hire, in the course of a business, an article which is, and which he knows or has reason to believe is, an infringing article".

In s.228,

"(1) In this Part "infringing article", in relation to a design, shall be construed in accordance with this section.

(2) An article is an infringing article if its making to that design was an infringement of design right in the design".

Comments, anyone?

"For pig farmers, read potato farmers"

Thanks to Class 99er Jeremy for drawing our attention to Grimme v Scott, hot off the press today, a patent and UK Unregistered Design Right case on potato separators which separate spuds from "weeds, earth, clods, stones and haulm". Very agricultural.

On the design side of the case, the Claimants won a slightly pyrrhic victory, given that their rights were held to have expired in December 2008, on one out of three of the alleged infringements, and the defendant conceded that another had infringed, leaving one found not to infringe. The Defendant had admitted copying, so the design case revolved around similarity.

The Defendant raised a "threats" counterclaim under s253 of the Copyright, Designs & Patents Act on the basis of threatening letters from the Claimant's lawyers to the Defendant's customers. Slightly surprisingly he succeeded, since the judge held that the wording of the letter implicitly applied to all three of the allegedly infringing rollers, whereas one had been found non-infringing, so that the threat was not justified.

Here is the Defendant's "Original" roller, held to infringe:

And their "Second" roller, which escaped infringement on the basis that the internal chambers and rib shapes were different:

The case makes no new law, but illustrates the extent to which UK Unregistered Design Right protects even the internal parts of even purely functional designs, subject to the exclusion of "must fit" and "must match" features. The judge drew on the analysis of the pig fender in C & H Engineering v. Klucznik [1992] FSR 421 - but for pig, read potato.