IP Enterprise Court finds unregistered design right in plastic lockers infringed
The IP Enterprise Court has found that unregistered design right in plastic lockers sold under the brand name “eXtreme” lockers was infringed by lockers sold under the name “SuperTuff”.
Hacon J rejected the defendants’ arguments that the design of the whole eXtreme locker lacked originality or was commonplace. The judge accepted, based on the evidence, that the eXtreme locker was designed with another locker, the Remcon locker, very much in mind but found that the eXtreme locker as a whole was original over the Remcon design.
However, Hacon J did uphold the defendants’ “must fit” argument, finding that the shapes of the top and base panels of the eXtreme locker allowed the lockers to be stably stacked, so that design right did not subsist in those features.
Hacon J found that, even disregarding the top and bottom panels, the claimant’s case on the locker design as a whole did not fall away. Regarding primary infringement, based on the evidence, Hacon J found that the defendants copied the designs of the eXtreme lockers. He held that, taking all the designs’ features into account, the SuperTuff lockers were made substantially to the overall design of the eXtreme lockers, and that design right in various other features of the eXtreme design was also infringed.
The judge also upheld the claimant’s claim to secondary infringement. He rejected the defendants’ defence that they believed the eXtreme lockers to be copies of the Remcon lockers, which they considered to be commonplace. The defendants knew all the relevant facts.
The judgment is of interest as an exposition of the law regarding unregistered designs, with Hacon J carefully setting out the various principles which apply.
It is also of interest that Hacon J strongly suggested that claimants in design right cases set out in their pleadings, in a chart or similar format, significant features of their design and the extent to which they were found in the defendant’s article.
Case: Action Storage Systems Ltd v G-Force Europe.Com Ltd and another  EWHC 3151 (IPEC), 7 December 2016 (Bailii).
Practical Law 9.12.16