KF Global Brands Ltd v Lead Wear Ltd & Ors

Factual and Procedural Background

This is an action for infringement of the UK unregistered design right ("UKUDR") alleged to subsist in the design of the Plaintiff's cargo trousers, specifically the BKS-001 design. The Plaintiff claims that the Defendants infringed this design right by producing and selling similar trousers. The case management conference identified eight issues, but by trial the live issues were narrowed to four: subsistence of the design right (originality), primary infringement under section 226 of the Copyright, Designs and Patents Act 1988 ("the Act"), secondary infringement under section 227, and the possibility of additional damages under section 229(3).

The Defendants consist of Company A (the first Defendant), Defendant, and Defendant (the third Defendant). The alleged infringing trousers were manufactured in Bangladesh by a third-party manufacturer and sold by the Defendants, including via an online marketplace.

Three samples of the alleged infringing product were examined, with the primary focus on the first sample purchased before the letter before action was sent. The Plaintiff relied on a single design document (the BKS-001 design) to support originality and infringement claims.

Evidence was heard from three witnesses: a director of the Plaintiff who gave evidence about the creation of the BKS-001 design; the third Defendant who is also the sole director and shareholder of Company A, who gave evidence about the allegedly infringing trousers; and the second Defendant who purchased and sold the trousers via an online platform.

Legal Issues Presented

1. Whether the Plaintiff's BKS-001 design was original at the time of its alleged creation, thus subsisting as a UK unregistered design right.
2. Whether the Defendants committed primary infringement under section 226 of the Copyright, Designs and Patents Act 1988.
3. Whether the Defendants committed secondary infringement under section 227 of the Act.
4. If liability is established, whether additional damages should be awarded pursuant to section 229(3) of the Act.

Arguments of the Parties

Plaintiff's Arguments

• The Plaintiff asserted that the BKS-001 design was original and protected by UK unregistered design right.
• The Plaintiff relied on a combination of twelve specific design features to establish originality.
• The Plaintiff alleged that the Defendants copied the design and infringed the design right by producing trousers substantially to that design.
• The Plaintiff contended that the text in the first Defendant's online advertisement was copied from a licensee’s listing, supporting a claim of copying.

Defendants' Arguments

• The Defendants argued that the BKS-001 design was not original but copied from an earlier "Aldi" design, which was commonplace at the time of creation.
• The Defendants denied copying the Aldi design, asserting that their trousers were independently created.
• They contended that the allegedly infringing trousers were made in Bangladesh, so any alleged authorisation to infringe occurred outside the UK, negating primary infringement under UK law.
• The Defendants challenged the sufficiency of the letter before action and disputed that the second Defendant had reason to believe the goods were infringing for the purposes of secondary infringement.

Table of Precedents Cited

Court's Reasoning and Analysis

The court began by addressing the subsistence of the design right, focusing on originality in two senses: originating with the author (copyright sense) and not being commonplace in the design field at the time. The Defendants argued that the Plaintiff’s design was copied from an earlier Aldi design and was commonplace, but the court concentrated on the originality aspect related to copying.

The court found the Plaintiff’s witness, who claimed to have created the design independently, to be inconsistent and unconvincing. Evidence showed that the Aldi trousers were physically present during the design process and were likely provided to the manufacturer to replicate, indicating copying.

The court held that the only material difference between the Aldi design and the Plaintiff’s design as at April 2015 was a minor change from pen loops to a pen pocket. This difference was deemed too minor to create a new design right in the whole design, consistent with established principles preventing "evergreening" of design rights.

The Plaintiff’s claim relied solely on the whole design, not on the minor difference, and no alternative design right in the minor feature was pleaded. The court therefore concluded the design was not original and the claim failed at this stage.

Regarding infringement, the court noted that the Plaintiff compared the Defendants’ products to a second version of the design not pleaded and disregarded this comparison. The court accepted the Plaintiff’s argument that the Defendants copied the text of an online advertisement but held that copying advertisement text does not equate to design right infringement.

The court also emphasized the territoriality requirement: the alleged infringing products were made in Bangladesh, and any authorisation to infringe occurred there, outside UK jurisdiction. The court refused a late application to extend the claim to cover acts in Bangladesh.

Consequently, the court found no primary infringement as the Defendants’ products were not made in the UK nor authorised to be made there. Secondary infringement did not arise since there were no infringing articles. The court also found the second Defendant did not have reason to believe the goods were infringing based on the evidence and the letter before action, which was insufficiently detailed.

Additional damages were not considered due to the absence of infringement.

Holding and Implications

The court’s final decision was to DISMISS the Plaintiff’s claim for infringement of UK unregistered design right.

The direct effect is that the Defendants are not liable for infringement, and no remedies or damages are awarded to the Plaintiff. The court did not set any new legal precedent but applied well-established principles regarding originality, territoriality, and the scope of design right protection.