Design infringement: Neptune v DeVOL Kitchens
As a result of the Intellectual Property Act 2014, the scope of UK design right (namely, UK unregistered design) has changed. In Neptune (Europe) Limited v DeVOL Kitchens Limited, the England and Wales High Court (Patents Court) has considered the effect and application of this change.
In 2002, the claimant, Neptune, started designing kitchen furniture, selling it, between 2002 and 2011, through a distribution network and, since 2011, through its own branded stores. In 2006, Neptune designed the “Chichester range”, with the aim of bridging the modular and bespoke markets by producing high quality modular kitchens.
The defendant, DeVOL, was also a designer (as well as retailer) of kitchen furniture. Having been founded in the 1980s and designing a number of bespoke kitchens (including the “Classic range” in 1989), in 2008 DeVOL began to distribute Neptune’s Chichester range, which was successful.
In 2009, DeVOL decided to create its own range of modular kitchens, called the “Shaker range”. By 2010 the range was being offered in its stores, with the relationship between Neptune and DeVOL breaking down shortly afterwards.
In 2015, Neptune commenced a claim against DeVOL, alleging (among other things) that its design rights in its Chichester range had been infringed by DeVOL’s Shaker range. DeVOL asserted that it had independently designed the range (including that it had used its earlier Classic range as its basis).
Neptune alleged infringement in relation to twelve designs in articles of its kitchen furniture which, through case management, were reduced to six for the purposes of the trial: a wine rack; a one-drawer cabinet; a one-door wall cabinet; a one-door base cabinet; a curved end cabinet; and a door glazed cabinet.
Neptune relied on the entirety of each of the articles but sought to exclude certain features of the articles, including the cock-beading and moulding, which was one of the key differences between the design and alleged infringement.
It sought to do this on the basis that, among other things, the cock-beading and moulding was a “part of” each article. DeVOL resisted this on the basis that it was an “aspect of” each article and, as such, it was incapable of being excluded. The merits of this argument necessitated a discussion about the effect of the Intellectual Property Act 2014.
Effect of the Intellectual Property Act 2014
Until 01 October 2014, s. 213, Copyright, Designs and Patents Act 1988 stated: “(2) In this Part, ‘design’ means the design of any aspect of the shape or configuration (whether internal or external) of the whole or part of an article.” After 01 October 2014, by virtue of the Intellectual Property Act 2014, “any aspect of” was deleted from the section.
Prior to the amendment, the definition of “design” was considered to be very wide, enabling a claimant to claim design right in small, arbitrary aspects of an article. The amendment to section 213(2) was intended to address this problem by narrowing the definition of “design”. For example, the explanatory notes to the act stated:
“Subsection (1) limits the protection for trivial features of designs, by making sure that protection does not extend to ‘any aspect’ of the shape or configuration of the whole or part of an article. It is expected that this will reduce the tendency to overstate the breadth of unregistered design right and the uncertainty this creates, particularly in relation to actions before courts.”
The trial judge, Mr Justice Carr, explained the difference between a “part” and an “aspect” of as follows: “In my view, aspects of a design include disembodied features which are merely recognisable or discernible, whereas parts of a design are concrete parts, which can be identified as such … aspects of the design of a teapot could include the combination of the end portion of the spout and the top portion of the lid, which are disembodied from each other and from the spout and lid. They are not parts of the design.”
Application of the Intellectual Property Act 2014
As the design for the Chichester range was created in 2006, with the alleged infringement taking place between 2009 and 2017, this meant that the design was created before the amendment to the act and that the infringement occurred for five years before and three years after the amendment. The question arose, therefore, as to what definition of “design” applied and when.
Having considered the authorities, the court concluded that any cause of action which existed in “any aspect of” continues to exist for infringing acts incurred up to 01 October 2014 (presumably until the expiry of the six year limitation period), but does not apply to infringing acts after 01 October 2014.
In any event, the court held that the cock-beading and moulding was a “part” not an “aspect” of the design and, therefore, could be excluded pre-and post 01 October 2014.
As to the claim itself, while the designs were found to subsist, they were found not to be infringed. Rather, the source of the designs was broadly held to be DeVOL’s earlier kitchen furniture, the Classic range.
The practical implications of this decision are that, when a rights holder is assessing their infringement claim, they will need to consider when the design was created and when the infringing acts occurred. The rights holder enjoys wider rights if both occurred before 01 October 2014.