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    COMMONPLACE DESIGNS : COMMUNITY DESIGNS : COPYING : COPYRIGHT : INFRINGEMENT : PASSING OFF : PHOTOGRAPHS : UNREGISTERED DESIGN RIGHT : INFRINGEMENT OF DESIGN RIGHT IN WALL-MOUNTED CIGARETTE BIN : WHETHER DESIGN COMMONPLACE : WHETHER DESIGN COPIED : COPYRIGHT, DESIGNS AND PATENTS ACT 1988 s.229(3), s.213(4)


    A company’s unregistered design right and Community design right subsisting in the design of a wall-mounted cigarette bin had been flagrantly infringed by two companies in the light of their deliberate and substantially indistinguishable copying of the bin. There was also passing off and copyright infringement by reason of the use of certain photographs of the bin.


    The claimant company (P) alleged infringement by the defendant companies (W and E) of its unregistered design right and Community design right subsisting in the design of its wall-mounted cigarette bins, passing off, and infringement of its copyright in certain photographs of the bin.


    P had designed cigarette bins for public use and sold them since 2001. In 2005, it commissioned a photographer (X) to take photographs of the bin for marketing purposes. X assigned copyright in the photographs to P. In 2006, P redesigned its bin. W was a subsidiary of E. Both sold health and safety products. In 2006, W had purchased the business and assets of a company (S) which had previously supplied W with cigarette bins manufactured by P. S subsequently stopped purchasing bins from P and supplied its own bins, which it exhibited at a national exhibition in which X’s photographs were used.

    P contended that W and E had infringed its rights in the design of its second bin and invited the court to indicate whether W and E’s conduct had been flagrant so that an award of statutory additional or exemplary damages under the  Copyright, Designs and Patents Act 1988 s.229(3) was appropriate. W and E submitted that the design features of P’s bin were commonplace and that S had been involved in a collaborative process for the design of the second bin. They denied that they had copied the design of the second bin. P also asserted that the use of X’s photographs amounted to passing off and copyright infringement. W and E submitted that it had to have been within P’s expectation that the photographs would be used by others.


    HELD: (1) Designs which were “original” and otherwise capable of protection were excluded from such protection pursuant to  s.213(4) of the Act if they were “commonplace” in the design field in question at the time of creation. If the court was satisfied that a design had not been copied from an earlier design, then it was original in the copyright sense and the court had then to decide what was commonplace. If a number of designers working independently in the same field produced very similar designs by coincidence the most likely explanation of the similarities was that there was only one way of designing that article; in those circumstances, the design in question could fairly and reasonably be described as commonplace,  Farmers Build Ltd (In Liquidation) v Carier Bulk Materials Handling Ltd [2000] E.C.D.R. 42 followed. The burden of establishing commonplaceness rested on W and E, and they had not, in the circumstances, discharged it (see paras 97, 103, 113, of judgment).

     
    (2) P’s bins had been designed exclusively by it and ownership of unregistered design right in them belonged to P alone (para.121).
     
    (3) Infringement required the design in question to have been copied as opposed to independently designed. On the evidence, S’s bins were copied from the design of P’s second bin. It was fanciful to suggest that the design features in S’s bin were present by coincidence. P’s design, which was subject to Community design right, had been infringed (paras 136, 151, 169, 183).
     
    (4) The use of photographs of a competitor’s product for the purposes of selling one’s own products amounted to passing off, Bristol Conservatories Ltd v Conservatories Custom Built Ltd [1989] R.P.C. 455 followed. There was no requirement for passing off that anyone seeing X’s photographs would have to have associated them with P’s bins or known that they were of P’s bins. Prospective customers of S’s bins had, through the use of X’s photographs, been told that simply and untruthfully that S had designed the bins displayed when it had not. W and E were, accordingly, guilty of passing off (paras 188, 191, 196).
     
    (5) There was no evidence as to P’s expectation in respect of the use of X’s photographs and no way in which such expectation could, in any event, have afforded a defence to W and E. P’s copyright in the photographs had been infringed (paras 193, 196). (6) In the light of the deliberate and substantially indistinguishable copying of P’s designs, W and E’s infringement of P’s design rights had been flagrant.
    The question of whether additional damages should be awarded on that ground and whether any benefit had accrued to W and E in consequence of the infringement would, however, be left to another occasion along with the quantum of any such additional damages (paras 194-195).
     

    Judgment for claimant.

     

    PENDLE METALWARES LTD (T/A THOMAS BARKER & SON) v (1) WALTER PAGE (SAFEWAY’S) LTD (2) EMPTEEZY LTD (2012)


    Ch D (Stuart Isaacs QC) 31/07/2012


    “Lawtel update” 13.08.12