Action Storage Systems Ltd v G-Force Europe.Com Ltd & Anor

Factual and Procedural Background

This case concerns UK unregistered design rights in plastic lockers used primarily in schools. The Plaintiff ("Action Storage") manufactures and supplies lockers under the brand name "eXtreme Lockers," available in three sizes since 2006. The Second Defendant ("FECL") is a manufacturer of moulded plastic containers, which acquired a company ("Hygiplas") that had sold Action Storage's eXtreme lockers until 2013. The First Defendant ("G-Force") was established in 2013, sharing the same sole director with FECL and operating from adjacent premises.

In 2013, the Defendants launched a new range of lockers called "SuperTuff," manufactured by FECL and sold by both Defendants. Action Storage alleges that the SuperTuff lockers infringe its unregistered design rights by copying the design of the eXtreme lockers as a whole and parts thereof. The Defendants deny that their lockers are identical or substantially similar in design and assert grounds for lack of design rights.

The trial largely focused on the 450mm size of the lockers as representative. Counsel for the parties were identified as Attorney Bowhill for Action Storage and Attorney Davis for the Defendants.

Legal Issues Presented

1. Whether the Defendants' SuperTuff lockers infringe the Plaintiff's UK unregistered design rights in the eXtreme lockers.
2. The scope of design rights under the Copyright, Designs and Patents Act 1988, particularly following amendments by the Intellectual Property Act 2014.
3. The applicability of exclusions from design right protection, including features constituting methods or principles of construction, "must fit" features, and commonplace designs.
4. The originality requirement for design rights and the appropriate test for originality (traditional UK copyright test versus EU intellectual creation standard).
5. The interpretation and application of primary and secondary infringement provisions under the 1988 Act.
6. The extent to which features excluded from design right protection affect infringement analysis.
7. The knowledge or reason to believe requirement for secondary infringement.

Arguments of the Parties

Plaintiff's Arguments

• The Plaintiff claims ownership of UK unregistered design rights in the shape and configuration of the eXtreme lockers and parts thereof.
• The design rights claimed are limited to the designs embodied in the actual lockers, not abstract or approximate variants.
• The eXtreme locker design is original despite some influence from prior art (Remcon locker), with several features admitted by Defendants as original.
• The Defendants copied the design of the eXtreme lockers in producing the SuperTuff lockers, as evidenced by internal design proposals referencing the eXtreme design extensively.
• The SuperTuff lockers are made substantially to the design of the eXtreme lockers across all sizes.
• The Defendants had knowledge or reason to believe their lockers infringed after receiving notice via a letter before action.
• The Plaintiff emphasizes the importance of identifying significant design features clearly in pleadings and trial charts to assist clarity and focus.

Defendants' Arguments

• The Defendants deny that the SuperTuff lockers are identical or substantially similar in design to the eXtreme lockers.
• They argue that certain pleaded features do not constitute features of shape or configuration and thus do not attract design right protection.
• They contend that some features are methods or principles of construction excluded from design right protection.
• They maintain that some features are "must fit" features, enabling the lockers to connect or stack, which are excluded from design rights.
• The Defendants assert that the eXtreme design lacks originality because it was derived from prior art, particularly the Remcon locker.
• They argue the design is commonplace, relying on prior art including the Remcon and certain American lockers.
• They claim they believed the eXtreme lockers were copies of the Remcon lockers and that the design was commonplace, negating knowledge of infringement.
• They propose a broadly pleaded defence on commonplace design to be developed through expert evidence.

Table of Precedents Cited

Court's Reasoning and Analysis

The court began by addressing the Defendants' contention that some pleaded features were not features of shape or configuration capable of design right protection, particularly where the Plaintiff's pleadings used terms like "approximate" or "general." The court found that the Plaintiff limited its claim to designs embodied in the actual eXtreme lockers, rejecting claims to abstract designs. This avoided the need to resolve the full effect of s.1(1) of the 2014 Act.

On originality, the court acknowledged that the eXtreme locker design was created with the Remcon locker as a starting point but found that the Plaintiff's design included original features not slavishly copied. The Defendants' argument that the design lacked originality failed except for the moulded hinges, which the Plaintiff no longer claimed as original.

Regarding commonplace design, the court emphasized the need for defendants to plead significant features, prior art relied upon, and dates of availability to properly assert commonplace design. The Defendants failed to prove the Remcon locker design was commonplace within the relevant design field at the relevant time, leading to the failure of this defence.

On exclusions under s.213(3), the court analyzed the "method or principle of construction" and "must fit" exclusions. It concluded that the tapered ribs and rear panel design did not constitute methods or principles of construction but were specific designs. The shapes of the top and bottom panels, enabling stacking, constituted "must fit" features excluded from design right protection.

In assessing infringement, the court applied the two-step test: first establishing copying, then determining whether the articles were made exactly or substantially to the design. It excluded features not protected under s.213(3) from the comparison but included features lacking originality. The court found clear evidence of copying from the Defendants' internal design proposals referencing the eXtreme lockers repeatedly.

Visually and dimensionally, the SuperTuff lockers were substantially to the eXtreme design across all sizes, with admitted identical overall dimensions and many similar features. Some differences existed but did not negate substantial similarity. The court found primary infringement of design rights in the overall locker design and specific features including overall dimensions, oval indentation, side panel shape, and rear panel shape. The interior door design was not infringed.

Regarding secondary infringement, the court held that the Defendants had knowledge or reason to believe their products infringed, particularly after receiving a letter before action. The Defendants' belief that the eXtreme lockers were copies of commonplace prior art did not negate knowledge under s.227.

The court recommended that future design right cases include clear identification of significant design features in pleadings and trial exhibits to facilitate focused argument and avoid ambiguity.

Holding and Implications

The court held that the Plaintiff established both primary and secondary infringement of its UK unregistered design rights in the design of the eXtreme lockers as a whole and in specific features: the overall dimensions and proportions, the oval indentation, the side panel shape, and the rear panel shape.

The Defendants' defences based on lack of originality, commonplace design, and exclusions under s.213(3) failed except for the "must fit" features of the top and bottom panels, which were excluded from protection but did not prevent infringement of the overall design.

The decision directly affects the parties by confirming the Plaintiff's enforceable design rights and the Defendants' infringement thereof. No new legal precedent was established beyond the application and clarification of existing law in the context of this dispute.