Foreign Umbrellas Offer No Shelter

On 31st October 2002 the English Patents County Court gave judgment in a case that may have important practical consequences for the conduct of Unregistered Design Right cases in the United Kingdom. In particular, the court sought to limit the scope of the "prior art" that can be relied upon by a Defendant who argues that a Claimant’s design is not entitled to protection because it is "commonplace".

Since 1995, Fulton had been importing and selling in the UK foldaway umbrellas together with a protective storage case called the Miniflat. The Miniflat case was characterised principally by its ‘flat’, rectangular construction and pronounced seams. Fulton complained to the Patents County Court that another UK umbrella company, Totes, had also been importing and selling in the UK a number of umbrellas in cases that were substantial copies of the Fulton Miniflat, thus infringing its Unregistered Design Right ("UDR").

UDR is a property right that subsists in a design automatically upon its creation, providing certain criteria are satisfied. In particular, the design must be original. A design is not original if it is "commonplace" in the relevant design field at the time of its creation. Determining whether a design is commonplace requires comparing the similarities and differences, and their significance, between the design to be protected and similar designs existing in the same design field (in this case designs of umbrella cases).

Totes had found umbrella cases on the market in Australia and Japan (but not in the UK) that they believed to be almost identical to the Miniflat. They therefore argued that designs of umbrella cases available outside the UK should be included in an assessment of whether the Miniflat was "commonplace".

Judge Fysh QC remarked that UDR is a peculiarly British species of intellectual property, which has no international dimension. Therefore, an enquiry on commonplace should be limited to the UK. He thought this limitation to the UK particularly important to limit costs, by avoiding rich litigants scouring the world for designs that suit their case. It would also avoid last-minute discoveries being thrown up and delaying trial.

As the judge put it, a design that is commonplace in Vanuatu is of no relevance to the UK market.

Judge Fysh also considered that the fact that an example of the design could be found in the UK public domain was not sufficient for the design to be commonplace. This was not a "novelty exercise". The design example needed to be more than merely a museum piece or something commercially obscure.

The limiting of the circumstances in which a UDR can be attacked on the ground that it is commonplace and the corresponding reining in of the scope and cost of the enquiry undertaken on this issue prior to and during trial, will be strongly welcomed by UDR holders. As this decision was one of the Patents County Court it is of little binding authority, but since it comes from a respected Intellectual Property judge, it is likely to be persuasive in future cases.

© Herbert Smith 2002

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