The court adopted the same approach as in Designers
Guild, but to the UK unregistered design right
infringement test, namely whether the copy is made to
“substantially the same design”. It is a mistake to assume
that those words mean that the two designs must be very
similar to each other before there can be an infringement.
The fact that design right allows you to rely on a part or
parts of an article in fact gives it a wide scope. However,
equally true is that the mere fact that the respective
designs are substantially similar in appearance does not
inevitably mean that there is infringement, since some of
those similarities may be elements which have not derived
from the claimants’ design.
In this case, the judge concluded that the feature of the
sloping panel with the window extended down to the front
face was derived not from the claimants’ design but from
the defendant’s 2005 design. The only aspect of the
defendant’s design which was derived from the claimants’
design was its dimensions. Was that enough to infringe?
Claim (a) was effectively the shape of the whole pack.
Having found that the only elements that were copied
were the dimensions, the judge had to conclude that the
defendant’s design was not made substantially to the
claimants’ whole design. The part of both designs which
stood out and characterised them was the sloping top face
with the window partly on the slope and extending to the
front face, and that part of the defendant’s design was
taken from their 2005 design rather than from the
claimants’ design. The design right infringement claim
therefore failed.
The way in which design right claims are worded is
very important not only in order to avoid the claims
falling within one of the exclusions, but also to ensure
they cover those aspects of the design which have been
copied and are protected by design right. Would the
outcome have changed had the claimants drafted their
claims differently? Not arguing claims (b) and (c) would
have avoided the adverse ruling that those claims were
too broad to attract design right protection. However, in
light of the finding that the parts which characterised the
design had not been copied, it is difficult to see how an
alternative claim could have been constructed to bring an
actionable case when just the dimensions had been copied.
If such a claim had succeeded, it would have given the
claimants a monopoly in something that was no more
than a method or principle of construction applicable to
articles with many different appearances.