In KF Global Brands Ltd v Lead Wear Ltd & Ors, a recent UK unregistered design right (UK UDR) infringement case, no design was found to subsist in the claimant’s cargo trousers. This article explores why in UK UDR cases it is important to carefully consider which designs to plead, and whether alternatives could also be included – especially where changes to existing designs are relatively minor.

Case Background

KF Global Brands Limited (KFGB), a clothing supplier based in the UK, brought a claim in the the Intellectual Property Enterprise Court (IPEC) for UK UDR infringement against Lead Wear and others (collectively the defendants) on the basis that Lead Wear had copied the design of KFGB’s BKS-001 cargo trousers (the BKS design) in three versions of its own cargo trousers.

By the time the case got to trial, there were four live issues for the court to consider. First, did a UK UDR subsist in the BKS design. Second, was there primary infringement by Lead Wear. Third, was there secondary infringement by the second and third defendants. Finally, if liability was established, should KFGB be awarded additional damages.

The case ultimately turned on the question of subsistence.

Originality

Recorder Douglas Campbell KC noted that a design will only qualify for UK UDR protection under s213 of the Copyright, Designs and Patents Act 1988 (CDPA) if the design is “original” in two senses: (i) the design must originate with the author, as opposed to having been copied by the author from another design; and (ii) the design must not be “commonplace” in the design field in question at the time of creation.

The defendants focused on originality in the first, copyright, sense. Judge Campbell KC noted that (as per Action Storage Systems v G-Force Europe.com Ltd (2017)) “anything in the creation of the design requiring more than slavish copying will result in that design being original”.

While the bar for originality is a low one, the court noted that, where changes to an existing design were relatively minor, there would be no fresh design right for the overall design but merely for those parts that had been changed – as evinced in Neptune (Europe) v DeVol Kitchens (2018).

The facts of the case

KFGB relied on the combination of 12 features of its BKS design, as pleaded in its (re-amended) Particulars of Claim.

Lead Wear’s defence was that the BKS design was (a) copied from an earlier design known as the Aldi design, and (b) commonplace at the time of its alleged creation (having regard to the Aldi design).

At trial, one of KFGB’s directors, Mr. Khan, was cross-examined extensively on the topic of originality. Campbell KC noted that Mr. Khan’s answers were confused and without satisfactory explanation; certain of the evidence Judge Campbell KC did not believe.

Ultimately, he found that Mr. Khan had not only shown Mr. Ali of manufacturing business Ali Textiles the sample Aldi trousers but had given them to Mr. Ali to take back to Pakistan in order to produce a competing product. While Mr. Khan denied that the BKS design was substantially the same as the Aldi trousers, Judge Campbell KC considered the materials to “speak for themselves”.

The changes – the Aldi trouser pen loops replaced with a pen pocket and an immaterial alteration to the back belt loops – were, Judge Campbell KC found, a difference “so minor that it does not create a new design right in the BKS-001 design as a whole, and the claimant only relies on that design as a whole”. It followed that the design was not original, and consequently the claim failed.

A different tack?

In a different set of circumstances, what other arguments might have been open to the claimants? For example, could they have pleaded UK UDR in (a) part of the design as a whole, and/or (b) a plausible “second version” of the cargo trousers – which Judge Campbell KC nodded to in his judgment but the existence of which ran contrary to KFGB’s case (which was that there was only ever a single version of the BKS-001 design)?

As Judge Campbell KC acknowledged, there was presumably “good reason that [KFGB] thought any case relying on the pen pocket alone would fail” (possibly because there existed prior art in the design of that part).

In respect of the possible “second version”, Judge Campbell KC noted that he knew “nothing about who created it or when, or why [KFGB] might own title to design right therein”, and since KFGB “repeatedly doubled down on its case that there was only ever a single version of the BKS-001 design, long after it must have become apparent to [them] that such a case was unsustainable” he would disregard it.

In the end, on the facts, Judge Campbell KC concluded that, even if originality had been found to exist, KFGB lost on territoriality. The defendants’ products were manufactured in Bangladesh, and the only potential authorisation by them to do anything relating to the BKS design was an authorisation to make the imitative cargo trousers in Bangladesh.

The takeaway

In UK UDR cases, it is important to carefully consider whether the designs relied on meet all the requirements of s213 CDPA.

Emma Teichmann is a qualified solicitor and IA Manager at Stobbs. She supports clients on a wide range of contentious and non-contentious IP matters, as well as in closely connected areas such as privacy, reputation and general commercial. Emma can be reached at emma.teichmann@iamstobbs.com.