Marks & Spencer PLC v Aldi Stores Limited
[2024] EWCA Civ 178
KF Global Brands Limited v Lead Wear Limited & Ors
2 June 2023
[2023] EWHC 1303 (IPEC)
High Court
A company sued another for copying its pants design. The judge said the design wasn't original enough to be protected and that the copying didn't happen in the UK, so the lawsuit failed.
Key Facts
- •KF Global Brands Limited (Claimant) sued Lead Wear Limited, Kamrul Hassan, and Mohammed Abdul Kader (Defendants) for infringement of unregistered UK design right in its BKS-001 cargo trousers.
- •Three samples of allegedly infringing trousers were presented.
- •The Claimant's design was allegedly copied from an 'Aldi design'.
- •The main dispute centered on the originality of the Claimant's design and whether the Defendants' actions constituted infringement.
- •The Defendants' trousers were manufactured in Bangladesh by S&S Swimwear.
Legal Principles
A design is only protected under UKUDR if it is 'original' in two senses: (1) originating with the author and not copied, and (2) not commonplace in the design field.
Copyright, Designs and Patents Act 1988, ss 213(1), 213(4)
A low bar for originality exists; anything beyond slavish copying is original. However, minor changes to an existing design don't automatically create a new design right for the whole article.
Whitby Specialist Vehicles Ltd v Yorkshire Specialist Vehicles, Action Storage Systems v G-Force Europe.com Ltd, Raft Ltd v Freestyle of New Haven, Neptune (Europe) v DeVol Kitchens, Shnuggle Ltd v Munchkin Inc
Primary infringement under s 226 requires copying to produce articles exactly or substantially to the design. Authorisation to infringe requires the grant or purported grant to do the infringing act.
Copyright, Designs and Patents Act 1988, s 226; L Woolley Jewellers v A&A Jewellery; CBS Songs v Amstrad Consumer Electronics; Pensher Security Door Co Ltd v Sunderland City Council
Primary infringement requires an act in the UK or authorisation of an act in the UK. Secondary infringement (s 227) involves dealing with infringing articles knowing or having reason to believe they are infringing.
Copyright, Designs and Patents Act 1988, ss 227, 228; Russell-Clarke & Howe on Industrial Designs
Outcomes
Claim dismissed.
The Claimant's design was not original as it was substantially a copy of the 'Aldi design', with only a minor change (pen loops to pen pocket). This minor change did not create a new design right in the whole article.
No primary infringement.
Even if there was a second, unpleaded version of the design, the territoriality issue prevented a finding of primary infringement. The goods were manufactured in Bangladesh, and there was no evidence of authorization to manufacture in the UK.
No secondary infringement.
Because no primary infringement was found, secondary infringement did not arise. The letter before action was insufficient to establish that the Second Defendant had reason to believe the goods were infringing.