In the case of Neptune v Devol Kitchens, the High Court has considered the scope of the amendment to section 213 of the Copyright Design and Patents Act ("CDPA") to remove the words "any aspect" from the definition of an unregistered design which came into effect on 1 October 2014 (implemented by the Intellectual Property Act 2014). The definition of unregistered design right was narrowed slightly so that while a whole design and parts of a design can still be protected, a 'part of a part' cannot, so a designer should not face liability for copying a trivial part of someone's else's design (see here for related blog on the reforms).
The case concerned, inter alia, alleged infringement of UK unregistered design right. All the designs in question and some of the alleged infringements predated 1 October 2014, meaning that, at that time, the CDPA provided protection to "any aspect of" the shape or configuration of a design. It therefore needed to be decided whether the change to the law was retrospective and if so, to what extent.
The parties in this case are both established kitchen designers and manufacturers. The claimant contended that its well-known "Chichester" range had been copied by the defendant. Having carried out a detailed comparison, it was held that the kitchen cabinets were very simple articles, and therefore relatively small differences mattered. Mr Justice Henry Carr believed that in design terms, the differences identified above were significant.
Having regard to all the relevant circumstances, including the evidence of derivation, the defendant's designs were found not to have copied the claimant's designs so as to produce articles exactly or substantially the same (the test under section 226 CDPA).
In one instance, the claimed design involving "tooth shelving" was rejected as a valid design, as this was held to constitute a method or principle of construction (which cannot be protected by unregistered design right).
Any aspect - still relevant?
In his judgment, Mr Justice Carr took a logical approach to the law ruling that the amendment to delete "any aspect of" from section 213(2) CDPA was not fully retrospective in that it did not extinguish accrued rights of action for infringements which occurred prior to 1 October 2014. However, it did apply to any acts of infringement after 1 October 2014.
Shorter Trial Scheme
The case was run under the Shorter Trial Scheme ("STS"), a pilot scheme which is now nearly two years old and currently due to end in September 2018 (having been extended by one year). It was noted that this case was not ideal for the STS as there were claims of fraud and dishonesty, and extensive disclosure was provided by both parties.
Whilst multiple designs and issues do not necessarily render a case unsuitable for the STS, it is imperative that the case is controlled by robust case management and parties should expect the courts to implement this for cases under the STS going forward. Mr Justice Carr noted in his judgment that, with hindsight, he should have limited the parties to a single design each as this would have allowed the same issues to be argued in a more effective manner.
In addition to confirming that the amendment to section 213(2) of the CDPA is not fully retrospective, the case also provides an insight into the evolution of the STS, and how judges are continuing to learn how this scheme is best managed. The Scheme is a welcome attempt at streamlining cases and speeding up the litigation process and we shall monitor cases under the Scheme in its final trial year (together with the associated Flexible Trial Scheme) with a view to assess the likelihood of any further extensions or even its permanent implementation.