Farmer Build Ltd v Carier Bulk Materials Handling Ltd & Ors

Factual and Procedural Background

This case concerns an appeal from a judgment of Mr Justice Rattee regarding alleged infringement of unregistered design rights under Part III of the Copyright, Designs and Patents Act 1988 (the 1988 Act). The Plaintiff, Farmers Build Limited ("Farmers Build"), claimed design rights in an agricultural rotary screen slurry separator known as the TARGET machine. The Defendants, Carier Bulk Materials Handling Ltd and others ("Carier"), manufactured and marketed a similar machine called the ROTOSCREEN, which Farmers Build alleged infringed their design rights.

Farmers Build developed and marketed slurry separators from 1986 until insolvency in 1993. Carier, originally a manufacturer of corn bulk-handling machinery, became involved in designing and manufacturing slurry separators for Farmers Build under a licensing arrangement starting in 1991. Relations deteriorated due to financial difficulties, and Carier terminated the agreement in late 1992, subsequently selling slurry separators independently under the ROTOSCREEN name from 1993.

Farmers Build initiated proceedings in 1996 alleging infringement of design rights subsisting in the TARGET machine and certain component parts. At first instance, Rattee J found that design rights subsisted in the TARGET machine and specified components but refused monetary relief on grounds of acquiescence by Farmers Build. Farmers Build appealed the refusal of damages and account of profits, Carier cross-appealed the subsistence of design right, and filed a respondents' notice seeking to uphold the denial of remedies on additional grounds.

Legal Issues Presented

1. Whether design rights subsist in the whole and specified component parts of the TARGET slurry separator within the meaning of the 1988 Act.
2. Whether the designs claimed are "original" and not "commonplace" under Section 213(4) of the 1988 Act.
3. Whether Farmers Build's delay in pursuing infringement claims amounted to acquiescence, thereby barring monetary remedies.
4. Whether Carier infringed any subsisting design rights in the TARGET machine or its components.

Arguments of the Parties

Appellant's Arguments (Farmers Build)

• Design rights subsist in the overall shape and configuration of the TARGET machine and in the specified component parts listed in the Schedule to the statement of claim.
• The designs are original as they are the independent work of the designer and not mere copies of prior machines (GASCOIGNE and SUDSTALL).
• The designs are not commonplace in the relevant field of slurry separators, as they incorporate novel combinations and improvements solving known problems.
• Delay in commencing proceedings did not amount to acquiescence; Farmers Build did not induce Carier to believe infringement claims would not be pursued.
• Design right protection extends to combinations of parts and assemblies, not just individual components.

Respondents' Arguments (Carier)

• Design rights do not subsist because the designs are not original but copied from existing machines (GASCOIGNE and SUDSTALL).
• The claimed designs are commonplace in the design field of slurry separators and thus excluded from protection under Section 213(4).
• Specific components such as the inner hopper, scraper assembly, bearings, support arms, and perforated drum lack novelty or originality and are standard in the industry.
• Farmers Build acquiesced to infringement by delaying action and continuing to trade with Carier despite knowledge of ROTOSCREEN sales.
• The judge’s refusal of monetary relief on acquiescence grounds was correct and should be upheld.

Table of Precedents Cited

Court's Reasoning and Analysis

The Court of Appeal undertook a detailed statutory interpretation of Part III of the 1988 Act, focusing on the concepts of "design," "originality," and the exclusion of "commonplace" designs under Section 213(4). The court emphasized that design right subsists in aspects of shape and configuration of articles, including combinations and assemblies, rather than in the article as a whole or in the mere nature of the article.

The court agreed with the trial judge that the TARGET machine and the specified component parts (inner hopper, scraper assembly excepting the unpleaded spring-loaded hinge, bearings and throwers in combination with roller guards, support arms with spring tension mounting, and perforated drum) were original designs. The originality was established in the "copyright sense," meaning the designs were independently created and not slavishly copied.

Regarding the "commonplace" exclusion, the court held that the term requires an objective assessment of whether the design is well known or usual in the relevant design field at the time of creation. A design made up of commonplace features may still be protected if the combination is not commonplace. The court found that the TARGET machine's design was not commonplace in the slurry separator field, as it solved problems not addressed by prior machines and incorporated unique features.

The court rejected Carier's contention that the designs were commonplace or mere iterations of prior art, noting that the legislative purpose was to protect original designs from misappropriation without imposing a novelty requirement akin to registered designs or patents.

On acquiescence, the court carefully analyzed equitable principles and found that mere knowledge of infringement and delay in commencing proceedings do not constitute acquiescence. There was no evidence that Farmers Build's conduct induced Carier to believe that infringement claims would not be pursued, nor that Carier acted to its detriment relying on such belief. The court held that the trial judge erred in denying monetary remedies on the basis of acquiescence.

The court dismissed Carier's cross-appeal challenging subsistence of design right except with respect to the scraper assembly's spring-loaded hinge, which was not properly pleaded.

Holding and Implications

The Court of Appeal allowed the appeal on the acquiescence point, dismissing the defence that delay barred monetary relief, and dismissed the cross-appeal on the subsistence of design right except as to the unpleaded spring-loaded hinge in the scraper assembly.

The court declared that design right subsists in the TARGET machine as a whole and in the identified component parts, and that Carier infringed those rights by manufacturing and selling the ROTOSCREEN machine. The decision reinstates Farmers Build’s entitlement to damages or an account of profits for infringement.

There were no broader implications establishing new precedent beyond clarifying the interpretation of "commonplace" designs and the equitable defence of acquiescence in the context of unregistered design right infringement claims. The ruling confirms that delay alone does not bar recovery of damages absent conduct inducing belief in assent, and affirms the protection of original combinations of commonplace features as protected designs.