24 November 2003

Mark Heaney

In a recent decision (4 November 2003), the Court of Appeal has considered the extent to which UK unregistered design right may subsist in part of a design rather than the whole. The Court of Appeal held that a designer is entitled to prevent the copying not only of the whole but also of part of a design even if this means that Claimants can narrow their claim to design right in part of a product.


In the original Patents County Court proceedings, Fulton sought to prevent Totes from manufacturing and selling cases for a portable folding umbrella known as the “Miniflat”. Five different designs of case were alleged to infringe both Fulton’s registered design and its unregistered design rights. His Honour Judge Fysh held that two of the five designs infringed the registered design but that all five designs infringed the unregistered design right. Totes appealed the decision relating to the unregistered design right on one point of law – whether the law confers a separate unregistered design right in part, rather than the whole of, the original design.

The design in question was for an open-ended flat box, 21cm x 5cm x 3cm in size, with the open end being on one of the 5cm x 3cm sides. The top 4cm of the box were formed into a cuff approximately 4cm long (i.e. 4cm from the open end). The three Totes’ cases which had been found by the Judge not to infringe the registered design were identical to Fulton’s design with the exception of the removal of one side of the cuff, as shown below.

Fulton had claimed infringement of its unregistered design right on two different bases, either that Totes’ cases had been made by copying the entirety of its design and were substantially similar or that Totes’ cases had been made by copying a part of its design and were an exact reproduction. The former claim had failed because of lack of substantive similarity but the claim for infringement of part of the design had succeeded. Totes did not contest that unregistered design right subsisted in the design of the whole article but only whether the design of the whole article gave rise to rights in the part of the article upon which Fulton had succeeded.

Totes’ Argument

Totes position was that the law conferred no separate unregistered design right in the design lacking one side of the cuff, as only one thing had been designed, that is, the entire umbrella case. The design lacking one side of the cuff was a different design not envisaged by Fulton. Totes relied on evidence from Fulton that customers preferred the Fulton design which, it said, demonstrated that the two designs were different.

On the appeal of the Judge’s decision the Court of Appeal started by considering the relevant statutory provision. The relevant section of the statute says:

S213(2) In this Part “design” means the design of any aspect of the shape or configuration (whether internal or external) of the whole or part of an article.

It is this section that has been considered in the two leading cases of Ocular Sciences Ltd v Aspect Vision Care [1997] RPC 289 and A Fulton Co Ltd v Grant Burnett & Co [2001] RPC 36. Both cases make it clear that the proprietor of a design can rely on rights subsisting in the whole of a design or a part of that design.

In Fulton, Park J discussed the position in relation to rights subsisting in part of a design and concluded that a large number of permutations could arise in any one article:

“So the core meaning of “design” is the shape or configuration of an article. Prima facie that would mean the shape or configuration of the whole article. But it does not have to be the whole article. The design can be the shape or configuration of part of the article, and apparently any part may be sufficient. And the scope of what design right may subsist in is enlarged further by the reference to “any aspect” of the shape or configuration concerned.”

In Ocular Sciences, Laddie J also made it clear that the design right relied upon could be cut down to afford the best match to the product alleged to infringe:

“This means that the proprietor can trim his design right claim to most closely match what he believes the Defendant to have taken. The Defendant will not know in what the alleged monopoly resides until the letter before action, or, more usually, the service of the statement of claim. This means a plaintiff’s pleading has particular importance. It not only puts forward the claim but is likely to be the only statement of what is asserted to be the design right.”

The point made by Laddie J that a Defendant may not know of the precise rights that will be asserted against him has been discussed by text book writers and it has been suggested that such an approach is “ripe for abuse”. The Court of Appeal dismissed the possibility that such a position could be abused as infringement of the right would require copying of the design and the copyist must know that copying has taken place.

Mention was made in the textbooks of whether a reasonable limit on the quantity which can be taken from a design should be considered to prevent reliance upon a part of a design so small that unregistered design right cannot be said to subsist in it. The Court of Appeal rejected this proposition and simply stated that a copyist will either copy a readily identifiable part of a design or not copy at all.

The Court of Appeal rejected six further technical arguments raised by Totes and upheld the decision of Judge Fysh in the Patents County Court. Unregistered design right was held to subsist in the part of the design relied upon by Fulton and Totes’ appeal failed.


The Court of Appeal has now made clear that unregistered design right subsists not only in the entirety of a design but also in parts of that design. Even so, care should be taken to ensure that the parts of a design selected in which the rights are to be enforced are not subject to exceptions in the Copyright, Designs and Patents Act 1988 such as those relating to “must fit” or “must match” provisions or commonplace elements in the design field in question. Further, Fulton does not address the issue of how little can be taken from a design before the part taken can be said to be too insignificant to attract protection in its own right and this should be carefully considered when formulating a claim.

The case is also another example of the revival of the Patents County Court. The Court was originally set up as a cheaper and quicker alternative to the High Court for smaller registered design and patent cases. The Court had become an unpopular venue for cases due to costs and the fact that a large proportion of its decisions were overturned by the Court of Appeal. It has recently come under new management, with the appointment of His Honour Judge Fysh, and is attracting an increasing number of cases. A larger proportion of its decisions are also being upheld by the Court of Appeal, as in the above case.

Important - The information in this article is provided subject to the disclaimer. The law may have changed since first publication and the reader is cautioned accordingly.