In a registered design infringement claim, the court tackled a novel legal point: can a design with multiple potential configurations infringe a registered design? It concluded that if the accused design would infringe in a configuration likely to be used by the end user, this suffices to establish infringement. 

Although no evidence of commercial use or sale of the accused design was found, the court issued a forward-looking injunction to prevent future exploitation.

Facts

On 28 November 2024, His Honour Judge Hacon in the IPEC delivered his judgment in Simon Barber v Steven Francis Wakefield & Ors. The case centered on a dispute over an alleged infringement of a registered design for a tool used to open a door through a letterbox without a key, as set out below:

(the “Registered Design”). 

The design alleged to infringe (the “Accused Design”) was incorporated into a product created by the defendants, which, as became clear during trial, had never advanced beyond the prototype stage (the “Prototype”).

The claimant alleged that his registered design had been infringed by the defendants, with the first and third defendants contributing to the running of the second defendant company, Ultimate Tools.   

Issues

The trial addressed several key issues, including whether:

• Any features of the Registered Design were features dictated solely by the product’s technical function;
• The Accused Design produced a different overall impression on the informed user than the Registered Design; and
• The second defendant had used the Accused Design.

Features dictated solely by the product’s technical function?

The judge referred to Section 1C(1) of the Registered Design Act 1949 (1949 Act) that a registered design cannot be granted for features that are purely functional. The claimant acknowledged that a letterbox tool must have a U-shape of some sort so that it can hook through the letterbox, however he emphasised that beyond this function requirement, the overall shape of the tool could vary. He argued that the shape of the Registered Design was chosen specifically for its aesthetic distinctiveness, rather than for improved functionality. 

The defendants agreed that the U-shape was crucial but argued that the exact shape of the Registered Design made the tool more effective in bypassing the security hood of the letter box. However, when asked, the defendants struggled to demonstrate how the specific shape of the Registered Design enhanced functionality over other possible alternatives.

The judge concluded that the shape of the tool, while necessary to its function, could vary significantly without affecting its performance. Consequently, the features of the Registered Design were not solely driven by technical function and the exclusion did not apply.  

Similarly, the judge dismissed the defendants’ argument relying on the “must-fit” exclusion (section 1C(2)). This is where a design avoids infringement as its functionality requires precision akin to a “key in a keyhole”.

Different overall impression? 

A key issue raised by the defendants was whether the Prototype, composed of several component parts allowing for various configurations, constituted an infringement when not assembled into the shape relied on by the claimant. 

The judge considered whether the Prototype infringed the Registered Design if it produced a different overall impression in one configuration but not in another. As no UK authority was found, the judge approached the issue from basic principles.  

Ultimately, Hacon J concluded that it would be unsatisfactory for the Prototype to avoid infringement simply because theoretically it could be assembled differently. This approach would easily allow circumvention of design rights. Therefore, the judge took the view that if the Prototype would infringe in a configuration likely to be used by the end user, that is sufficient to establish infringement.

Whether the second defendant had used the Accused Design?

The registration of a design grants the proprietor the exclusive right to use the design including actions such as making, offering, importing, or selling products incorporating the design. The right is infringed if someone, without consent, engages in any of these exclusive activities. However, the design right is not infringed by private, non-commercial acts or acts done for experimental purposes (under section 7A). 

The Prototype had been made by the defendants and given to a locksmith for him to test and provide feedback on. The judge found that this making and use were acts of potential infringement, subject to section 7A. However, while the Prototype was made public in media posts and at a trade fair, the judge did not consider these nor the supply of the Prototype to the locksmith to be infringing acts under s7A(2)(a) as it was clear the Prototype was not made or used for commercial purposes and its presentation at a trade fair and in a media post were not public acts of sale or use. 

Key takeaways 

The judge ultimately found that, while the Prototype did not produce a different overall impression to the Registered Design, as there had been no use of the Prototype publicly or for commercial purposes, there was no infringement of the Registered Design. However, Hacon J granted an injunction preventing the defendants from being able to commercially market tools that replicate or resemble the Prototype in the future, effective only until the expiration of the Registered Design.

The case clarifies that multiple configurations of a product do not necessarily shield a defendant from liability – the court’s assessment of infringement may focus on the likely configuration of a product as used by end consumers, which can suffice to establish infringement. It also serves as a reminder of the strategic value of proactively securing registered design rights as even when past infringement is not established, the courts can issue an injunction to prevent future infringements.