201612.15
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Judge provides guidance on UK unregistered design right

The recent case of Action Storage v G- Force Europe in the Intellectual Property Enterprise Court (IPEC) has thrown UK unregistered design right (UK UDR) into the spotlight as the judge, HHJ Hacon, considered whether or not UK UDR subsisted in storage lockers. The judgment can be found here.

UK UDR grants rights holders the ability to protect the shape or configuration of the whole or part of their product for a period of ten years from first marketing or 15 years from the date it was first recorded in a design document if that period is shorter.

In the case itself the claimant, Action Storage, were manufacturers and suppliers of lockers which they had sold under the brand name eXtreme lockers. The claimant alleged that the defendants had copied the design of the eXtreme locker in creating their own SuperTuff lockers. Thus Action Storage alleged that their design rights in the design of the eXtreme lockers as a whole, and also in the designs of parts of the lockers had been infringed by the defendants.

The Defendant conceded certain claims in respect of the design of the locker in question. The claimant accepted that the defendants had used a third party locker on which to base their design. More surprisingly, the Defendants accepted that five features of the of claimant’s eXtreme locker were original. Given this, the decision of HHJ Hacon that the eXtreme locker was original was of no surprise.

However, the key point of the judgement was the outline HHJ Hacon gave to practitioners with regards how to format future pleadings in UK UDR claims as follows. Firstly, all significant features of a design should be set out in the Particulars of Claim together with the extent to which those features appear in a defendant’s product. Secondly, a defendant should either accept this given list of features or propose amendments to it. Finally, the defendant should either admit or deny the presence of significant design features in its product.

In the present case the claimant was successful and the judge found that UK UDR subsisted in the lockers and that it had been infringed.

If you have any questions on the above, please do not hesitate to contact the team at McDaniel & Co. on 0191 281 4000 or legal@mcdanielslaw.com.