Refurbished Branded Goods, Commercial Connection and the Limits of Trade Mark Exhaustion – Commentary on AGA Rangemaster Group Ltd v UK Innovations Group Ltd [2025] EWCA Civ 1622

Refurbished Branded Goods, Commercial Connection and the Limits of Trade Mark Exhaustion: Commentary on AGA Rangemaster Group Ltd v UK Innovations Group Ltd [2025] EWCA Civ 1622

1. Introduction

This Court of Appeal decision sits at the intersection of trade mark exhaustion, the burgeoning market in refurbished and upgraded branded goods, and the boundaries of copyright protection for industrial designs. The dispute between AGA Rangemaster Group Ltd (“AGA”) and UK Innovations Group Ltd (“UKIG”) raises two central questions:

  • To what extent can a refurbisher and converter of branded goods rely on trade mark exhaustion when its marketing of those goods suggests an “official” or affiliated product line?
  • Does a design for a functional control panel qualify as a “graphic work” so as to escape the statutory limitation on industrial design copying in section 51 of the Copyright, Designs and Patents Act 1988 (“CDPA”)?

AGA manufactures and sells the iconic AGA range of cookers. UKIG acquires old fossil‑fuel AGAs, refurbishes them and converts them to run on electricity by fitting its proprietary “eControl System”. AGA sued UKIG for:

  • trade mark infringement, complaining of UKIG’s use of “AGA” in relation to converted cookers and in marketing materials; and
  • copyright infringement, alleging that the graphic design of an AGA electric control panel (“AGA Panel Work 1”) was copied in UKIG’s control panel.

At first instance in the Intellectual Property Enterprise Court (IPEC), Nicholas Caddick KC (sitting as a Deputy High Court Judge) found limited copyright infringement but upheld a defence under CDPA s.51, and held that UKIG’s activities fell within the trade mark use provisions but that its reliance on trade mark exhaustion failed in part because of the way it marketed the converted cookers.

On appeal, the Court of Appeal (Sir Colin Birss C, Arnold LJ and Falk LJ) dismissed UKIG’s appeal on the trade mark issue and AGA’s cross‑appeal on copyright. The decision is important for two principal reasons:

  1. It clarifies the scope of “legitimate reasons” under the exhaustion provision in section 12 Trade Marks Act 1994 (“TMA”) where refurbished or converted branded goods are marketed in a way that suggests a commercial connection with the trade mark proprietor.
  2. It confirms a relatively narrow conception of “graphic work” for the purposes of copyright subsistence and the continued force of section 51 CDPA in limiting copyright protection for industrial designs, while deliberately leaving open the unresolved question of compatibility with EU law following Cofemel.

2. Background and Procedural History

2.1 The parties and the business model

AGA is a well‑known manufacturer of premium range cookers. UKIG operates in the aftermarket: it acquires existing AGA cookers, undertakes refurbishment and, crucially, converts them from fossil fuel to electric operation by installing its own “eControl System” control unit. UKIG then sells these refurbished and converted cookers, and also offers conversion services for customers’ own AGAs.

UKIG’s marketing prominently used the AGA name, including phrases such as “Buy an eControl Aga” accompanied by images of cookers bearing both an AGA badge and a separate “eControl System” badge, references to “Controllable Aga Cookers” and “Aga colours”, and claims to have “decades of Aga experience and conversions”. Its invoices similarly used composite expressions such as “eControl AGA” or “AGA eControl”.

2.2 Claims at first instance

AGA brought:

  • a trade mark infringement claim under section 10 TMA in respect of UKIG’s use of the sign “AGA” in relation to the converted cookers and related services; and
  • a copyright claim in respect of the “control panel graphics” (AGA Panel Work 1), said to be an original artistic work (a drawing) created by an employee, Martin Johnson.

The action against the individual director, Mr McGinley, was dismissed and there was no appeal on that point.

As to trade marks:

  • UKIG accepted that, save for immaterial details, its activities fell within section 10 TMA (use of a sign identical with or similar to a registered trade mark in relation to goods or services).
  • UKIG relied on an exhaustion defence under section 12 TMA (implementing Article 7 of the Trade Marks Directive), asserting that all relevant cookers had initially been put on the market by AGA or with its consent, thereby exhausting AGA’s rights.
  • AGA invoked the derogation in section 12(2), arguing that there were “legitimate reasons” to oppose further dealings, including:
    • impairment or change to the condition of the goods;
    • risk of serious damage to the reputation of the AGA trade mark; and
    • creation of a false impression of a commercial connection between AGA and UKIG and/or the eControl System.

As to copyright, AGA alleged that UKIG’s control panel copied AGA Panel Work 1, and that no defence applied. UKIG relied on section 51 CDPA, arguing that AGA Panel Work 1 was a “design document” for a non‑artistic article (a control panel) so that making articles to that design, or copying such articles, did not infringe.

2.3 First instance outcome

In outline, the IPEC judge held:

  • Trade marks:
    • Section 10 TMA was engaged.
    • Refurbishment and conversion as such did not amount to a change or impairment of the goods that provided legitimate reasons to oppose under section 12(2) (paras [32]–[40] of the first‑instance judgment, as summarised at [8]).
    • There was no sufficient evidence that quality or safety issues posed a risk of serious damage to AGA’s reputation (paras [41]–[46]; summarised at [9]).
    • However, the manner of marketing and the use of composite expressions such as “eControl AGA”, together with imagery and invoices, were likely to give normally informed and reasonably attentive customers the impression that the converted cookers and the eControl System were AGA products or AGA‑authorised conversions.
    • That false impression of a commercial connection constituted “legitimate reasons” under section 12(2), so UKIG’s exhaustion defence failed.
    • Post‑sale confusion based purely on an AGA badge plus a separate “eControl System” badge on the cooker itself was rejected on the facts.
  • Copyright:
    • AGA Panel Work 1 was an original artistic work (a drawing) and UKIG had copied a substantial part of it.
    • However, the work was a design document for a control panel, and the control panel was not an “artistic work” within section 4 CDPA.
    • Section 51 CDPA thus applied, and UKIG did not infringe by making or copying the control panel as an article to that design.

2.4 The appeal and cross‑appeal

UKIG appealed on two trade mark grounds:

  1. Ground 1 (legal test): the judge applied the wrong legal test for “legitimate reasons” under section 12(2), particularly by importing the “with difficulty” standard from Portakabin and Google France, and by mis‑characterising the relevant “commercial connection”.
  2. Ground 2 (factual findings): the judge’s conclusion that UKIG’s marketing created the impression of a commercial connection was said to be irrational or “rationally unsupportable”.

AGA brought a cross‑appeal on copyright:

  1. Ground 1: AGA Panel Work 1 was a design document for an artistic work (the control panel as a graphic work), so that section 51 did not apply.
  2. Ground 2: if section 51 did apply, it was incompatible with assimilated EU law, particularly Cofemel, and should be disapplied or re‑interpreted.

The Court of Appeal dismissed UKIG’s appeal and AGA’s cross‑appeal. Birss C delivered the trade mark judgment; Arnold LJ dealt with copyright; Falk LJ agreed with both.

3. Summary of the Court of Appeal’s Decision

3.1 Trade mark and exhaustion

The Court of Appeal upheld the first‑instance finding that UKIG’s reliance on exhaustion failed because there were “legitimate reasons” for AGA to oppose further dealings under section 12(2) TMA. In particular:

  • The Court accepted that merely refurbishing and converting genuine AGA cookers, and reselling them, did not itself amount to a change or impairment justifying intervention, and did not pose a serious reputational risk (summarised at [8]–[9]).
  • However, the way UKIG marketed those goods – using expressions such as “Buy an eControl Aga” and composite labels like “eControl AGA” and “AGA eControl”, alongside images and invoices – was likely to give customers the impression that:
    • the converted cookers were part of AGA’s own product range; and/or
    • the eControl System and/or conversion service was provided by, or economically linked to, AGA.
  • That misimpression of commercial connection engaged section 12(2). AGA therefore had legitimate reasons to oppose UKIG’s use of its mark despite prior exhaustion (see especially [49]–[57]).
  • UKIG’s arguments that the judge applied the wrong legal test, in particular by deploying a “with difficulty” standard, and that he wrongly treated product‑level connections as sufficient, were rejected (see [39]–[42]).
  • The Court clarified that the “with difficulty” test originates from Google France and is appropriate for keyword advertising cases under Article 5(1) of the Trade Marks Directive, but has no place in a non‑internet, exhaustion‑based case such as this (see [26]–[31], [39]).
  • The attack on the judge’s factual evaluation as “rationally unsupportable” failed. The conclusions on consumer impression were open to him on the evidence and were fully reasoned (see [49]–[57]).
  • Although the judge had mentioned “balancing” the interests of trade mark proprietors and aftermarket dealers (reflecting language from Viking Gas), the Court held that this was a description of the effect of the established tests, not a free‑standing proportionality exercise. The correct approach is simply to apply the legal tests (e.g. impression of a commercial connection), which the judge did (see [41]–[42]).
  • Given the dismissal of UKIG’s appeal, AGA’s respondent’s notice on post‑sale confusion was strictly unnecessary. The Court indicated that, in any event, it would not have interfered with the first‑instance rejection of that limb of the case (see [58]).

3.2 Copyright and section 51 CDPA

On the copyright cross‑appeal, Arnold LJ held:

  • AGA Panel Work 1 is indeed an original artistic work (a drawing) and had been substantially copied by UKIG – matters which UKIG did not challenge (see [60]–[61]).
  • However, the panel itself is not an “artistic work” within the meaning of section 4 CDPA. In particular, it is not a “graphic work” simply because it is “a thing to be looked at” (see [70]–[73]).
  • Accordingly, AGA Panel Work 1 is a design document for a non‑artistic article, so section 51(1) applies and gives UKIG a defence: making articles to that design, and copying such articles, is not an infringement (see [62]–[64], [73]).
  • AGA’s contention that section 51 is incompatible with assimilated EU law following Cofemel would, if correct, pose a significant problem, but the Court declined to decide the issue because:
    • all parties accepted that if there were an incompatibility, it could not be resolved by interpretation without contradicting the clear statutory scheme (see [79]–[80]); and
    • no procedural route (such as a declaration of incompatibility) was available or sought, so the issue would be purely academic – it would not affect the rights of the parties or require legislative action (see [80]–[81]).

The cross‑appeal was therefore dismissed (see [82]).

4. Legal Framework and Key Concepts

4.1 Trade mark exhaustion under section 12 TMA

Section 12 TMA, implementing Article 7 of Directive 89/104/EEC (now Article 15 of Directive 2015/2436/EU), provides in substance:

  • Section 12(1): A registered trade mark is not infringed by use in relation to goods that have been put on the market in the UK/EEA under that mark by the proprietor or with its consent. This is the principle of exhaustion – once the proprietor has placed genuine goods on the market, its right to control their onward circulation is exhausted (see [4]–[5]).
  • Section 12(2): This defence does not apply where there are “legitimate reasons” for the proprietor to oppose further dealings in the goods, “in particular, where the condition of the goods has been changed or impaired” after they were put on the market.

The Court recognises three established categories where “legitimate reasons” commonly arise (see [7], [23]):

  1. where the condition of the goods has been changed or impaired after first sale;
  2. where further dealings may seriously damage the reputation of the trade mark; and
  3. where the dealings give the impression of a commercial connection between the reseller and the trade mark proprietor.

These categories are not exhaustive but provide a useful framework (see [23]).

4.2 The “normally informed and reasonably attentive” customer

The assessment of whether there are legitimate reasons, particularly under the third category (impression of a commercial connection), is made from the standpoint of the average consumer:

  • “normally informed and reasonably attentive” (Viking Gas at [40], applied at [12], [34]); sometimes expressed as “reasonably well informed and reasonably observant and circumspect”.

In this case, that consumer is a potential purchaser of an expensive, refurbished and converted AGA cooker.

4.3 Post‑sale confusion

“Post‑sale confusion” refers to confusion experienced not at the point of sale, but by third parties who encounter the goods after purchase – for example, guests seeing a product inside a consumer’s home, or passers‑by in the street. UK law recognises that such confusion can be relevant to trade mark infringement:

  • Iconix Luxembourg Holdings SARL v Dream Pairs Europe Inc [2025] UKSC 25 at [86];
  • Montres Breguet SA v Samsung Electronics Co Ltd [2023] EWCA Civ 1478 at [84]–[85]; cited at [36].

In this case, AGA’s post‑sale argument focused on co‑branding impressions created by an AGA badge plus a separate “eControl System” badge on the product. That argument was rejected on the facts.

4.4 Copyright: artistic works and section 51 CDPA

Section 1(1)(a) CDPA provides that copyright subsists in “original literary, dramatic, musical or artistic works” – a closed list (see [65]). Section 4(1) then defines “artistic work” as a closed list of sub‑categories:

  • (a) a graphic work, photograph, sculpture or collage, irrespective of artistic quality;
  • (b) a work of architecture; or
  • (c) a work of artistic craftsmanship.

Section 4(2) provides (emphasis added):

“In this Part – … ‘graphic work’ includes – (a) any painting, drawing, diagram, map, chart or plan, and (b) any engraving, etching, lithograph, woodcut or similar work …”

Section 51 then limits the extent to which copyright in design documents controls industrial manufacture:

  • Section 51(1): It is not an infringement of any copyright in a design document or model recording or embodying a design for anything other than an artistic work or a typeface to make an article to the design or to copy an article made to the design (quoted at [62]–[63]).
  • A “design” is the design of the shape or configuration of the whole or part of an article, other than surface decoration. A “design document” is any record of a design, such as a drawing or CAD file (see [63]).

The structure is deliberate: drawings of industrial products attract copyright as artistic works, but the law limits that copyright so as not to confer de facto perpetual monopolies in industrial designs.

4.5 Assimilated EU law and the Marleasing duty

As a former member of the EU, the UK implemented numerous directives, including:

  • the Trade Marks Directive (now replaced); and
  • the Information Society Directive (2001/29/EC), interpreted by the CJEU in Cofemel.

Following Brexit, EU law as it stood at the end of the transition period was converted into “assimilated EU law”. Domestic courts are no longer bound in the same way, but principles of interpretation – particularly the Marleasing duty to interpret national law “so far as possible” in conformity with EU law – remain relevant for legacy provisions.

However, that duty has limits:

  • Courts cannot interpret legislation in a way that is “directly inconsistent with, or goes against the grain of” the statute (see [79]).
  • If a conforming interpretation is impossible, the court must apply the national statute, unless some higher constitutional mechanism (e.g. a declaration of incompatibility in a human rights context) is engaged – which was not the case here.

5. Detailed Analysis of the Trade Mark Aspect

5.1 The factual matrix: refurbishment versus conversion and marketing

A key distinction in the Court’s reasoning is between:

  • Refurbishment and resale of second‑hand AGA cookers; and
  • Conversion and marketing of “eControl AGAs”.

The judge, and the Court of Appeal, accepted that a robust secondary market in refurbished AGAs exists and that consumers are well aware that second‑hand AGAs may have been refurbished by independent specialists. In that pure refurbishment scenario, there would normally be no implication of a commercial link with AGA (see [13], [49]).

The present case was, however, more complex because UKIG was not simply refurbishing; it was fitting its proprietary eControl System to convert the cookers to electricity (see [1], [13]).

The critical marketing materials were:

  • Website text: “The eControl System – Why even seasoned Aga lovers are flipping the switch – Buy an eControl Aga” superimposed over an image of a cooker bearing both the AGA badge and an “eControl System” badge, accompanied by warranty information (see [50]).
  • Further website statements: “Why the eControl System? With decades of Aga experience and conversions …”, images labelled “Controllable Aga Cookers”, and pages showing “Aga colours” (see [50]).
  • Invoices that described the goods using composite expressions such as “eControl AGA” or “AGA eControl” (see [16], [49]–[57]).

Birss C agreed with the IPEC judge that, taken together, these features meant the website was effectively offering customers the opportunity to “Buy an eControl AGA” (see [13], [50]–[51]) and to have existing AGAs converted using that system.

The Court accepted that UKIG’s witnesses believed customers understood they were being offered second‑hand cookers with UKIG’s own system. But, critically, that understanding was not corroborated by documentation, and the judge found that the invoices themselves reinforced, rather than dispelled, the impression of commercial connection (see [16], [55]).

5.2 The exhaustion defence and its limits: precedents cited

The Court’s legal analysis of section 12(2) is rooted in established CJEU case law. Each authority plays a particular role.

5.2.1 Parfums Christian Dior SA v Evora BV (Case C‑337/95) (“Dior”)

In Dior, the CJEU held:

  • Once goods have been lawfully placed on the market by the trade mark proprietor, a reseller is free to resell them and to use the trade mark to inform the public of that resale (see [24] and Dior [38]).
  • However, the proprietor retains a residual right to object where further dealings cause damage to the reputation of the trade mark, which can constitute a “legitimate reason” under Article 7(2) (see [24] and Dior [40]–[48]).

In the present case, this reputational limb was invoked by AGA (e.g. allegations of inferior or unsafe parts), but the judge found no sufficient risk of serious reputational damage, and this finding was not challenged on appeal (see [9]).

5.2.2 Bayerische Motorenwerke AG v Deenik (Case C‑63/97) (“BMW”)

In BMW, an independent repairer and reseller advertised “Repairs and maintenance of BMWs” and “Specialist in BMWs”. The CJEU held:

  • The repairer could use the mark to describe his services concerning BMW cars.
  • However, the trade mark proprietor could object where the use “may create the impression that there is a commercial connection between the other undertaking and the trade mark proprietor” – for example, that the repairer was part of the authorised dealer network or had a special relationship with BMW (see [25], citing BMW [51]).
  • Merely benefitting from an “aura of quality” associated with the mark is not enough; there must be a risk that the public is led to believe that such a commercial connection exists (see [25], citing BMW [53]).

This case is the origin of the “impression of commercial connection” limb of “legitimate reasons”. Birss C relies on it to frame the test under section 12(2).

5.2.3 Google France SARL v Louis Vuitton Malletier (Joined Cases C‑236/08 to C‑238/08)

Google France concerned internet keyword advertising. Traders were purchasing trade marks as keywords so their ads would appear when those marks were searched for. The Court’s concern was whether such use adversely affected the origin function of the trade mark under Article 5(1).

Crucially, the CJEU held (see [26] and Google France [84]):

“The function of indicating the origin of the mark is adversely affected if the ad does not enable normally informed and reasonably attentive internet users, or enables them only with difficulty, to ascertain whether the goods or services referred to by the ad originate from the proprietor of the trade mark or an undertaking economically connected to it or, on the contrary, originate from a third party.”

This “with difficulty” formulation is more protective of the trade mark proprietor than a classic confusion test. It reflects the specific risks posed by keyword advertising, where the ad is separated from the mark as typed by the user.

5.2.4 Portakabin Ltd v Primakabin BV (Case C‑558/08) (“Portakabin”)

Portakabin combined both:

  • keyword advertising (the defendant purchasing “Portakabin” as a Google AdWords keyword to advertise its own and second‑hand Portakabin units); and
  • exhaustion issues related to resale of genuine Portakabin units.

Two aspects are central:

  1. At [80], the CJEU, citing BMW, reiterated that the reseller may not advertise in a way that gives the impression of a commercial connection with the trade mark proprietor; this would amount to a “legitimate reason” under Article 7(2) (see [29]).
  2. At [81], the Court linked the Google France “with difficulty” test to exhaustion, stating that where, in a keyword advertising context, an advertiser’s use of a sign “does not enable normally informed and reasonably attentive internet users, or enables them only with difficulty, to ascertain whether the goods or services referred to by the ad originate” from the trade mark proprietor or a third party, this “corresponds to a situation” where Article 7(2) applies (see [29]).

Birss C emphasises that the reference back to [54] in Portakabin – itself concerned with keyword advertising and Article 5(1) – is crucial: the “with difficulty” limb was developed specifically for that context (see [30]).

5.2.5 Viking Gas A/S v Kosan Gas A/S (Case C‑46/10) (“Viking Gas”)

In Viking Gas, the defendant re‑filled, re‑labelled and re‑sold gas bottles sold under the claimant’s mark. The CJEU addressed exhaustion under Article 7 and held:

  • There must be a balance between:
    • the trade mark proprietor’s legitimate interests; and
    • the purchasers’ interests in fully enjoying their property rights and the general interest in undistorted competition (see [33], quoting Viking Gas [31]).
  • In deciding whether there are “legitimate reasons” to oppose further dealings, one must ask whether the defendant’s acts create an impression of a commercial connection (see [34], [39]).
  • The Court identified two potential erroneous impressions (see [34] and Viking Gas [40]):
    1. that there is a connection between the undertakings (Kosan and Viking); or
    2. that the gas used to refill the bottles comes from Kosan.
  • Assessment must consider trade practices and consumer expectations (e.g. whether consumers are accustomed to bottles being refilled by others), and the context in which the consumer deals with the refiller (see [34]).

This case is particularly significant here because it shows that the relevant “connection” can relate not just to the undertakings, but also to the origin of the product or service incorporated into the original branded goods.

5.2.6 Bristol‑Myers Squibb v Paranova (Joined Cases C‑427/93, C‑429/93 & C‑436/93)

BMS v Paranova concerned the repackaging and re‑labelling of parallel‑imported pharmaceuticals. The CJEU laid down conditions under which a trade mark proprietor cannot oppose such repackaging, including obligations on the parallel importer to give notice and to ensure that the new packaging does not damage the reputation of the mark.

In this case, the IPEC judge referred to BMS to support the idea that where a reseller’s marketing is likely to create a false impression of connection, the reseller should take steps to dispel that impression (see [17], [47]). Birss C considered that wholesale importation of the detailed BMS conditions would be inappropriate outside the pharmaceuticals context but agreed that the general idea – that the reseller must dispel a false impression it creates – was sound (see [47]).

5.2.7 Soda‑Club (CO2) SA v MySoda Oy (Case C‑197/21)

Soda‑Club is a post‑Brexit CJEU decision and is therefore not binding, but it emphasises two points:

  • Article 7(2) (and thus section 12(2)) is a derogation from the principle of free movement of goods and must be interpreted strictly (see [35]).
  • The conditions in BMS are context‑specific and should not automatically be transplanted to other sectors (see [35], [47]).

5.3 Birss C’s clarification of the “with difficulty” test

A central legal point on appeal concerned the “with difficulty” formulation. UKIG argued that the IPEC judge had wrongly applied a test that would find infringement or legitimate reasons where consumers could ascertain the true commercial origin of the goods only “with difficulty”.

Birss C’s analysis is nuanced:

  • He acknowledges that the judge’s summary of the law at [48] of the IPEC judgment did refer to customers being “unable, or … able only with difficulty” to ascertain origin (see [11]–[12]).
  • He explains that the “with difficulty” test originates in Google France and was expressly tailored to Article 5(1) and keyword advertising (see [26]–[27]).
  • In Portakabin, that test was linked to Article 7(2) only in the specific context of keyword advertising; the CJEU did not purport to alter the general exhaustion test in non‑internet cases (see [29]–[31]).
  • Accordingly, “that question has no place in a case like this, which does not involve internet keyword advertising” (see [39]).

However, the Court holds that this mis‑statement of the law in the IPEC judgment was ultimately harmless:

  • The IPEC judge’s actual conclusion did not depend on the “with difficulty” limb. He found that the marketing “was likely to give customers the impression that what they were being offered was an AGA product …” (see [13]–[14], [39]).
  • He did not find that customers could only ascertain the truth “with difficulty”; he found that they were affirmatively likely to believe there was a commercial connection.

Thus, while the Court of Appeal clearly limits the “with difficulty” test to keyword advertising cases, it declines to overturn the decision on that basis.

5.4 The scope of “commercial connection”: beyond undertakings to products and services

UKIG further argued that the relevant “commercial connection” must be a connection between undertakings (AGA and UKIG as businesses), not a connection at the level of products or components. They said the IPEC judge had instead found something more diffuse, such as a connection between the eControl System and AGA’s products, which was not sufficient.

Birss C rejects this argument:

  • While BMW referred to an impression of connection between undertakings, that was dictated by the facts of that case (authorised versus independent dealers). It does not limit the legal concept of commercial connection (see [40]).
  • Viking Gas shows that relevant connections can include an impression that the refilled gas itself comes from the trade mark proprietor (see [34], [40]). This is a product‑level or service‑level origin issue, not only an inter‑undertaking relationship.

In the present case, the Court holds that it is enough that the marketing suggested:

  • the eControl System was an AGA system; or
  • the conversion service was an AGA service; or
  • the “eControl AGA” was one of AGA’s own product lines.

This is precisely analogous to a consumer believing that the gas used to refill a Kosan bottle is Kosan gas when it is not. Accordingly, the IPEC judge’s focus on product‑level impressions was not an error of law (see [40]).

5.5 Balancing interests: conceptual, not a free‑standing test

UKIG criticised the IPEC judge’s references to “striking a fair balance” between:

  • the interests of the trade mark proprietor; and
  • the interests of resellers and purchasers in the secondary market.

Birss C acknowledges that the judge did phrase matters in terms of a balance (see [41]). This reflects Viking Gas [31], where the CJEU spoke of striking a balance between property rights and free movement/competition (see [33]).

However, the Court explains that:

  • The legislative scheme itself (via concepts like impairment of condition, reputational damage, and impression of commercial connection) embodies this balance (see [41]).
  • National courts are not meant to conduct an open‑ended proportionality balancing exercise; they are to apply the defined tests.
  • Reading the IPEC judgment as a whole, it is clear that the judge did not actually decide the case by weighing interests in the abstract. He decided by asking whether UKIG’s dealings “give the impression of a commercial connection” (see [41]–[42]).

The reference to the claimant’s interests “outweighing” those of resellers in [52] is interpreted as a statement of the result, not the methodology (see [41]–[42]).

5.6 Application to UKIG’s conduct: why legitimate reasons arose

The core finding of fact, upheld on appeal, is summarised at [49]:

“The judge’s key finding was about what impression customers were likely to be given by UKIG’s material about their eControl System and their conversion work. The finding in essence was that UKIG’s material (website and invoices) was likely to give customers the impression that the eControl System originated from AGA and/or that the act of conversion to fit that system was an AGA provided service. Relatedly, the judge’s view was the term ‘eControl AGA’ (or similar) would be understood to refer to a product in AGA’s range.”

The Court endorses that analysis:

  • Composite expressions such as “eControl AGA” or “AGA eControl” would naturally be understood by consumers as denoting a model in the AGA range, particularly as AGA already has models with similar naming structures (e.g. “AGA eR7”) (see [14], [52]).
  • Consumers making a significant, considered purchase would pay attention to branding. The use of AGA’s highly distinctive mark increases the risk of a perceived connection (see [14]).
  • The fact that the eControl name was itself distinctive does not change this. A composite mark combining a distinctive third‑party name with “AGA” can still imply a sub‑brand or co‑branded product within the proprietor’s range (see [52]).
  • UKIG had other options: there was “nothing necessary or inevitable” about the use of a single composite label such as “eControl AGA” (see [56]). They could have:
    • described the goods as “refurbished AGA cookers fitted with UKIG’s eControl system”; and
    • avoided presenting “eControl AGA” as a model name in AGA’s line‑up.
  • Because the marketing created the false impression, UKIG bore the burden of taking positive steps to dispel it (cf. BMS), but in fact “the website and invoices did the opposite” (see [17]).

Birss C goes further, stating that on the material, he would himself have reached the same conclusion:

“In my judgment, based on the marketing material, there is every reason for a customer to think an ‘eControl AGA’ or ‘AGA eControl’ is a product in AGA’s own range of cookers, that the eControl System is in all likelihood an AGA system, and that the conversion operation carried out by UKIG is in all likelihood an AGA service.” (see [57])

5.7 Rejection of UKIG’s criticisms under Ground 2

UKIG’s Ground 2 attempted to recast factual disputes as errors of law. The Court deals with them in a structured way (see [51]–[57]).

  • Small font and layout: UKIG complained that the judge’s reproduction of website text did not reflect font sizes and layout. The Court acknowledges this but notes that there was ample evidence of UKIG using expressions like “eControl AGA” and “AGA eControl”; the point goes nowhere (see [51]).
  • Distinctiveness of “eControl”: While the judge accepted that “eControl” was distinctive, that does not preclude a finding that “eControl AGA” suggests an AGA product line, especially given AGA’s own model naming (see [52]).
  • Necessity of using “AGA”: The Court accepts that UKIG had to use “AGA” descriptively to indicate the original origin of the cookers, but emphasises that the problem was not use of “AGA” per se, but the manner of use in branded composite expressions and marketing that conveyed an official connection (see [53], [45]).
  • Absence of AGA’s own conversion services: The fact that AGA did not itself convert old AGAs to electric did not help UKIG. There was no evidence that consumers believed AGA would not, in principle, offer such a service; the judge could not be criticised for failing to factor in a non‑existent “state of mind” (see [54]).
  • Careful, high‑value purchases: UKIG emphasised that customers were making relatively expensive purchases involving detailed discussions. The judge expressly considered this, but found no documentary evidence showing that those discussions corrected the false impression created by the website and invoices (see [55]).
  • Secondary market and environmental policy: UKIG argued that public interests in avoiding waste and allowing old AGAs to be given a new lease of life, as well as “flourishing” secondary markets, weighed against a finding of legitimate reasons (see [44]). The Court holds that while such interests justify the principle of exhaustion and the protection of refurbishers, they do not entitle refurbishers to market their products as if they were official extensions of the brand (see [44]–[45]).

Having rejected all of these points, the Court concludes that the IPEC judge’s finding was not remotely irrational, let alone “rationally unsupportable” (see [57]).

5.8 Post‑sale confusion and co‑branding

AGA argued in its respondent’s notice that even if UKIG’s point‑of‑sale marketing were acceptable, the presence on the cooker of both:

  • an AGA badge; and
  • a separate “eControl System” badge

would create post‑sale confusion: third parties seeing the cooker might assume it was a co‑branded AGA/eControl product (see [18]).

The IPEC judge rejected this on finely‑balanced facts, and the Court of Appeal declined to disturb that conclusion (see [58]). Birss C notes:

  • The post‑sale confusion argument differed materially from the website/invoice context.
  • The judge had expressly recognised that the question was “not easy” ([57] of the IPEC judgment, cited at [58]) and carefully weighed the evidence, including concessions by Mr McGinley in cross‑examination.
  • The conclusion fell within the range of permissible factual assessments.

While not altering the outcome, the Court reiterates that post‑sale confusion is a legitimate consideration in trade mark law (see [36]).

6. Detailed Analysis of the Copyright Aspect

6.1 Section 51 CDPA and its policy rationale

Section 51 is designed to limit the scope of copyright protection in relation to industrial designs. Without such a provision, copyright in technical drawings or CAD files could be used effectively to secure a perpetual monopoly in the manufacture of functional articles – undermining both the separate registered/unregistered design regimes and the policy against indefinite monopolies in technical products.

As Arnold LJ notes, section 51 was the product of extensive consultation and deliberate policy choices leading to the 1988 Act (see [74]; Copinger & Skone James §13‑538–13‑539).

The section provides, in essence:

  • If you have copyright in a design document recording a design for anything other than an artistic work or a typeface, then:
    • other people are free to make articles to that design; and
    • copying those articles is not an infringement of your copyright in the design document (see [62]–[63]).

The outcome in any given case thus turns on:

  1. whether the article represented in the design document is itself an “artistic work” as defined in section 4; and
  2. whether the allegedly infringing act consists of “making an article to the design” or copying such an article.

In the present case, it was common ground that UKIG had copied AGA Panel Work 1, and that AGA Panel Work 1 was itself an original drawing. The dispute centred on whether the control panel represented in that drawing was an “artistic work”.

6.2 The control panel and the meaning of “graphic work”

AGA argued that the control panel was an artistic work because it was a “graphic work” within section 4(1)(a) and 4(2). It relied in particular on a passage from Jacob J in Anacon Corporation Ltd v Environmental Research Technology Ltd [1994] FSR 659, suggesting that the essence of a “graphic work” is that it is “a thing to be looked at” (see [67]–[70]).

Arnold LJ rejects this broad reading. The key points are:

  • Section 1(1) CDPA sets out a closed list of categories of work in which copyright subsists. Section 4(1) sets out a closed list of types of “artistic work” (see [65]).
  • “Graphic work” is defined in section 4(2) by giving examples – paintings, drawings, diagrams, maps, charts, plans, engravings, etchings, lithographs, woodcuts and similar works – all of which are created by making marks on a substrate to generate an image (see [66]).
  • HHJ Hacon’s formulation in Response Clothing Ltd v EWM [2020] EWHC 148 (IPEC), [2020] FSR 25, is approved: a “graphic work” is created by the author in this way; the definition cannot be “endlessly flexible” so as to encompass every object that can be looked at (see [66]).
  • The ordinary dictionary meaning of “graphic” supports this interpretation: it relates to drawing or painting and the graphic arts, design and printing (see [71]). AGA’s reading would largely erase the word “graphic” from the statute.

The Court therefore holds that for a work to be a “graphic work” it is necessary, but not sufficient, that it is “a thing to be looked at”; it must also be of the same essential type as the examples in section 4(2) – something produced by graphic techniques on a substrate (see [70]–[71]).

6.3 Why the control panel is not an artistic work

AGA Panel Work 1 depicts a control panel consisting of (see [72]):

  • a 4mm thick rectangular toughened glass sheet with rounded corners;
  • six chamfered holes (two large to accommodate rotary switches);
  • a “foreground screen” printed with an oval, a circle, a line, an AGA logo and switch positions; and
  • a “background screen” printed black save for spaces aligned with the holes and one additional space.

Although the foreground screen incorporates visual elements reflecting creative choices by the designer, the panel as a whole is:

  • predominantly a functional object (a physical interface for controlling the cooker), albeit with some decorative or graphic features (see [72]–[73]); and
  • not created by the designer as a “graphic work” in the sense of marks on a substrate forming an image for visual contemplation in its own right.

The Court accepts that AGA Panel Work 1, the drawing, is an artistic work. But it agrees with the IPEC judge that the article depicted – the control panel – is not itself an artistic work in any statutory category:

  • It is not a “graphic work” as properly understood.
  • AGA did not contend that it was a photograph, sculpture, work of architecture or work of artistic craftsmanship (see [73]).

Accordingly, AGA Panel Work 1 is a “design document” for “anything other than an artistic work or a typeface” within section 51. UKIG’s manufacture of control panels to that design, and copying such panels, falls within section 51(1) and is non‑infringing (see [73]).

6.4 The role of Anacon and “visually significant” copying

AGA placed weight on Jacob J’s statement in Anacon that an artistic work is a “thing to be looked at”. Arnold LJ clarifies that:

  • Anacon was primarily concerned with infringement, not subsistence. Jacob J held that a circuit diagram was both an artistic and a literary work, but that making a “net list” of components did not infringe the artistic copyright because the alleged infringement “simply [did] not look like the artistic work” (see [67]–[69]).
  • The key notion in Anacon (and before that in Interlego and Rose Plastics) is “visually significant” copying – relevant to what counts as copying of an artistic work. That is a different question from whether an object is itself an artistic work.

Thus, the dictum that a graphic work is a “thing to be looked at” must be understood in context. It does not mean that every object which is looked at (including sculptures, photographs, films, buildings, products) is a “graphic work”.

6.5 Cofemel, section 51 and assimilated EU law

AGA’s Ground 2 asserted that, even if section 51 applied on its terms, it was incompatible with assimilated EU law as interpreted in Cofemel – Sociedade de Vestuario SA v G‑Star Raw CV (Case C‑683/17) and should be disapplied or re‑interpreted.

In Cofemel, the CJEU held, in summary (see [76]):

  • Where something is original in the sense of being the author’s own intellectual creation and is identifiable with sufficient precision and objectivity, it is a “work” entitled to copyright protection (see Cofemel [30], [32], [35]).
  • This applies equally to designs; however, it is necessary to take particular care in assessing whether a design truly meets this standard (see Cofemel [48]–[55]).
  • If a design does qualify, it is entitled to cumulative protection under both design law and copyright law, and Member States may not impose additional requirements such as a specific level of aesthetic effect (see Cofemel [45], [47], [52], [56]).

AGA argued that once AGA Panel Work 1 was recognised as an original work, EU law (and so assimilated EU law) precluded a national rule that curtailed the scope of that protection in a way not falling within Article 5’s closed list of exceptions and limitations.

UKIG responded that:

  1. Section 51 is not incompatible with EU law as properly understood; or
  2. If there is a tension, it is impossible to give section 51 a conforming interpretation without contradicting Parliament’s clear intention; the Court must therefore apply section 51 as enacted; and
  3. If necessary, the Court of Appeal could depart from Cofemel.

Arnold LJ notes the strong Marleasing‑style duty of conforming interpretation but its limits (see [79]). Counsel for AGA ultimately accepted that:

  • If section 51 is indeed inconsistent with Cofemel, it cannot be salvaged by interpretation without rewriting the statute (see [80]).
  • AGA could not in this appeal seek a form of declaration compelling legislative change; any ruling on incompatibility would therefore be academic (see [80]–[81]).

On that basis, the Court declines to answer whether section 51 is inconsistent with assimilated EU law (see [81]):

“In my judgment no purpose would be served by deciding this issue of law. It would be a wholly academic question since it would neither affect the parties' rights nor require the Government to take any action to rectify the alleged inconsistency.”

Section 51 therefore continues to apply according to its terms.

7. Complex Concepts Simplified

7.1 Trade mark exhaustion and legitimate reasons

Exhaustion means that once a trade mark owner has sold a genuine product (or consented to its sale) in the UK/EEA, it cannot normally use its trade mark rights to control subsequent resale or use of that product. This protects:

  • resellers and repairers – who can buy and sell branded second‑hand goods; and
  • consumers – who can trade freely in used goods.

Legitimate reasons to oppose are narrow exceptions where the trade mark owner’s rights “revive” despite earlier exhaustion, because the reseller’s behaviour undermines key trade mark functions. Common examples include:

  • Condition change: e.g. goods are altered or repaired in a way that affects quality (repacking pharmaceuticals, refilling bottles, modifying cars).
  • Reputational damage: e.g. goods are presented so badly (substandard shop displays, inappropriate associations) that the brand’s image is harmed.
  • False commercial connection: the reseller’s marketing leads consumers to believe they are dealing with the brand owner or an authorised affiliate when they are not.

In this case, the key issue was the third category.

7.2 The “with difficulty” test vs ordinary confusion

In “ordinary” trade mark cases, the question is often: will the average consumer be confused about origin? The “with difficulty” test from Google France is more stringent from the proprietor’s perspective: origin is impaired not only if the consumer is confused, but also if the consumer can work out the origin only “with difficulty”.

The Court of Appeal confirms that this broader test:

  • applies specifically in the context of internet keyword advertising, where the risk of hidden sponsorship is higher; and
  • does not apply to traditional exhaustion cases like refurbishing and converting physical goods.

7.3 Commercial connection: undertakings vs product origin

A commercial connection may involve:

  • a perceived relationship between businesses (e.g. dealer authorised by a car manufacturer); or
  • a perceived origin of a product or service incorporated into the goods (e.g. gas in a bottle, a conversion system in a cooker).

The Court confirms both types of connection are relevant. In this case, it was enough that consumers would likely think that:

  • the eControl System was an AGA system; or
  • the conversion was an AGA service; or
  • “eControl AGA” was an official AGA model.

7.4 Graphic work vs industrial product; design documents and section 51

A graphic work in copyright law is not any object we look at. It is a work like a painting, drawing, diagram, map or plan – created through graphic techniques on a surface. A printed control panel on glass may contain graphic elements, but the panel as a whole is primarily a functional industrial object.

A design document is a record of a design for an article – such as a technical drawing or CAD file. Section 51 CDPA allows others to:

  • make articles to a design; and
  • copy those articles;

without infringing copyright in the design document, provided that the article is not itself an artistic work.

7.5 Assimilated EU law and conforming interpretation

Where UK law implements EU directives, courts generally try to interpret it so as to be consistent with EU law (Marleasing principle). But they cannot rewrite clear statutory schemes. If conformity would require contradicting the statute’s explicit wording or purpose, the court must apply UK law as it stands unless some higher constitutional mechanism is engaged.

In this case, even if Cofemel implied that section 51 is too restrictive, the Court could not “read it down” without fundamentally altering its effect. So the question of compatibility was left open.

8. Impact and Future Significance

8.1 Guidance for refurbishers, converters and upcyclers

This judgment provides concrete guidance for businesses operating in the secondary market for branded goods:

  • You are generally free to:
    • refurbish genuine branded products;
    • add your own systems or improvements; and
    • resell them using the brand name descriptively (e.g. “refurbished AGA cooker”, “conversion service for AGA cookers”).
  • However, you must not:
    • brand the resulting product with a composite label like “eControl AGA” that suggests a new model line from the trade mark owner;
    • present your conversion system as if it were an official or proprietary system of the brand owner, absent a true commercial link;
    • omit clear disclaimers when your marketing otherwise implies official status.

If your marketing creates a risk that consumers will think your upgraded product is an official product or service of the brand owner, you may lose the protection of exhaustion and face trade mark infringement claims.

8.2 Implications for brand owners

For trade mark proprietors, the case confirms:

  • You cannot generally prevent independent refurbishers from reselling genuine goods or even from fitting their own systems, provided the goods remain of acceptable quality and your reputation is not seriously damaged.
  • But you can intervene where:
    • marketing suggests that the refurbished or converted goods are part of your official product line; or
    • consumers are led to believe that a third‑party system or service actually originates from you or is authorised by you.
  • Evidence about:
    • how your own products are named and branded;
    • sectoral practices and consumer expectations; and
    • the reseller’s own documents, such as invoices and website copy;
    will be critical in establishing a false impression of commercial connection.

Brand owners should also note the Court’s acceptance of post‑sale confusion as a relevant factor, even though it did not affect the outcome in this case.

8.3 The aftermarket, sustainability and competition

The decision navigates a tension between:

  • promoting aftermarkets, refurbishment and sustainable use of durable goods (keep old AGAs out of landfill, convert them to more efficient fuel sources); and
  • protecting brand owners from unauthorised quasi‑official extensions of their product ranges.

The Court’s approach supports:

  • vigorous competition in secondary markets; and
  • innovation in retrofit and upgrade systems;

while insisting on:

  • clear branding and honest marketing; and
  • avoidance of consumer confusion about the source of key components and services.

8.4 Doctrinal significance for trade mark law

Doctrinally, the case:

  • Confines the “with difficulty” origin test to keyword advertising and Article 5(1)/section 10 contexts, preventing its uncritical migration into exhaustion and physical goods cases.
  • Confirms that “commercial connection” under section 12(2) can relate to product‑level origin (e.g. a conversion system) as much as to inter‑undertaking relations, in line with Viking Gas.
  • Reaffirms that the three standard categories of legitimate reasons (condition change, reputational damage, impression of connection) are a useful but non‑exhaustive framework.
  • Clarifies that references in CJEU jurisprudence to “balancing” interests are descriptive of the legislative design, not invitations to unfettered judicial balancing beyond established tests.

8.5 Significance for copyright and industrial design

On copyright, the judgment strengthens the position that:

  • “Graphic work” is a relatively narrow category essentially limited to works like drawings, diagrams and paintings, created by graphic means on a substrate.
  • Functional products that incorporate graphic elements are not automatically artistic works; some may be protected as works of artistic craftsmanship or other categories, but not simply because they are visually appealing.
  • Section 51 CDPA remains a robust limitation on copyright in design documents for industrial articles.

This has practical implications across industries (consumer electronics, product design, industrial interfaces), indicating that:

  • technical drawings and CAD files can be protected as artistic works, but
  • copyright will not usually prevent competitors from making articles to those designs unless the articles themselves qualify as artistic works.

8.6 Future of section 51 and EU/UK divergence

By leaving the potential incompatibility between section 51 and Cofemel undecided, the Court:

  • preserves the status quo for UK industrial design practice; but
  • signals an area of potential long‑term divergence between UK and EU approaches to the cumulation of design and copyright protection.

Any future challenge to section 51’s compatibility with EU‑inspired copyright principles is likely to require:

  • a more direct procedural mechanism; or
  • legislative reform;

rather than mere re‑interpretation by the courts.

9. Conclusion

AGA Rangemaster v UK Innovations Group provides important clarification on two fronts:

  1. Trade mark exhaustion and refurbished goods:
    • Refurbishers and converters of branded goods remain free, under exhaustion, to resell and advertise those goods using the trade mark, but only so long as they do not create a false impression of official status or affiliation.
    • The Court tightly confines the “with difficulty” origin test to keyword advertising cases and confirms that, in exhaustion cases, the central question remains whether there is an impression of a commercial connection.
    • That connection can relate not only to the business relationship between undertakings but also to the perceived origin of components and services integrated into the goods.
  2. Copyright and industrial design:
    • The definition of “graphic work” is kept aligned with its ordinary and statutory context: works produced by graphic techniques, not all visually appealing products.
    • Section 51 CDPA continues to play its intended role in preventing copyright from over‑reaching into industrial product monopolies, at least unless and until Parliament decides otherwise.
    • The question of section 51’s harmonisation with EU‑level doctrines such as Cofemel is left deliberately unresolved as an academic issue in this case.

The case will be a key authority for:

  • aftermarket businesses, particularly those offering environmentally‑motivated conversions and upgrades to branded products;
  • brand owners seeking to protect the integrity of their product ranges; and
  • copyright practitioners navigating the boundary between artistic works and industrial designs in the post‑Brexit landscape.

Above all, it underscores that the law seeks to accommodate genuine secondary markets and innovation while maintaining clear lines between independent businesses and the official offerings of trade mark proprietors.

Case Details

Year: 2025
Court: England and Wales Court of Appeal (Civil Division)

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