The High Court has held that the narrowing of the definition of the UK unregistered design right applied to infringements after 1 October 2014, but did not extinguish rights of action for infringements accrued before that date.
Until 1 October 2014, section 213 of the Copyright, Patents and Designs Act 1988 (CDPA) (section 213) defined "design" as the design of any aspect of the shape or configuration, whether internal or external, of the whole or part of an article.
Section 1(1) of the Intellectual Property Act 2014 amended section 213(2) by deleting the words "any aspect of" with effect from 1 October 2014 (the amendment).
In DKH Retail Ltd v H Young (Operations) Ltd, the High Court held that the effect of the amendment was that a claim to an unregistered design right could no longer be extended to designs other than those specifically embodied in all or part of an article and that there could be no more unregistered design rights in abstract designs ( EWHC 4034). It was agreed by the parties that the amendment was fully retrospective, so that an act that would have infringed before 1 October 2014 might retrospectively cease to infringe.
In Whitby Specialist Vehicles Ltd v Yorkshire Specialist Vehicles Ltd and Action Storage Systems Ltd v G-Force Europe.com Ltd, the High Court and Intellectual Property Enterprise Court expressed doubt over the approach in DKH Retail, but did not decide the point ( EWHC 4242 (Pat);  EWHC 3151 (IPEC)).
Practice Direction 51N provides that the Shorter Trial Scheme will not normally be suitable for: cases including an allegation of fraud or dishonesty; cases which are likely to require extensive disclosure; cases where extensive witness or expert evidence is relied on; or cases which raise multiple issues (see feature article "Streamlined litigation: piloting towards shorter and flexible trials", www.practicallaw.com/5-620-0509).
N and D designed and sold kitchens. N claimed that D's Shaker range infringed N's unregistered design rights in its Chichester range. N also claimed D infringed its Community registered design.
All of the designs predated the amendment; however the alleged infringements took place both before and after 1 October 2014. N's Chichester range featured beading and moulding which was absent from D's Shaker range.
N argued that the beading and moulding should be excluded from consideration because the amendment removed the requirement to consider "any aspect of" the shape or configuration. N also argued that the amendment was retrospective so applied in respect of infringements which took place before 1 October 2014.
The court held that the amendment was not fully retrospective as it did not extinguish accrued rights of action for infringements which occurred before 1 October 2014. However, it held that the amendment did apply to claims in respect of acts of infringement committed after that date.
It would be unusual for a statutory provision to extinguish accrued causes of action in respect of acts that were unlawful under the law in force when they were committed, and clear statutory language would be required to achieve this.
The court had to determine whether the beading and moulding were "parts" or "aspects" of the design. It held that aspects of a design include disembodied features that are merely recognisable or discernible, whereas parts of a design are concrete parts that can be identified as such. The beading and moulding were concrete parts of the designs, created separately and then applied to the Chichester cabinets. As they were parts, and the CDPA permits designs for parts of articles, N was entitled to exclude those features from consideration.
D's kitchen units did not infringe any of N's unregistered design rights. N's Community registered design was valid but also not infringed.
This decision has helpfully settled the uncertainty over the point at which the amendment is to apply. It also provides useful guidance on the distinction between "part of an article" and an "aspect of an article" which is crucial to understanding the impact of the amendment. Interestingly, the claim was heard under the Shorter Trial Scheme. The court noted that unregistered design claims require proof of copying and that, if this gives rise to extensive disclosure, significant cross-examination or attacks on credibility, a case may not be suitable for the Shorter Trial Scheme. However, even where multiple designs are in issue, and multiple features considered, this does not necessarily mean that the case is unsuitable for the Shorter Trial Scheme provided that the case is controlled from an early stage by robust case management.
Case: Neptune (Europe) Ltd v Devol Kitchens Ltd  EWHC 2172 (Pat).
First published in the October issue of PLC Magazine and reproduced with the kind permission of the publishers. Subscription enquiries 020 7202 1200.