Court Determines Infringement of Patents, Invalidity of Registered Designs in Safestand v Weston Homes Case

Citation: [2023] EWHC 3250 (Pat)
Judgment on

Introduction

The case of Safestand Limited v Weston Homes PLC & Ors revolves around allegations of infringement of three patents and three re-registered designs (RRDs) pertaining to builders’ trestles, by the defendant, Weston Homes PLC. The claimant, Safestand, sought to establish infringement and faced a counterclaim from the defendants for revocation of the patents on grounds of lack of inventive step, invalidity of the RRDs due to a lack of unity/clarity, and a lack of individual character of the RRDs.

Key Facts

The patents in question include UK Patent No. 2 378 978 (“UK 978”), European Patent No. EP 1 660 738 B1 (“EP 738”), and UK Patent No. 2 420 822 (“UK 822”). Weston conceded infringement of UK 822 after evidence was heard. The designs titled “Trestles for building industry” are registered under No. 9000229349001 (“RRD 0001”), No. 90003121450004 (“RRD 0004”), and No. 90003121450005 (“RRD 0005”). Weston argued that the designs failed to represent a single article, lacked clarity, and did not possess individual character in light of existing designs.

The court’s analysis focused on several legal principles crucial to the determination of the case:

  1. Design as a Single Article: Designs must represent a single article rather than multiple embodiments, drawing on precedents like GBL UK Trading Ltd v H&S Alliance Ltd and the requirements as set forth in the Design Regulation (Council Regulation (EC) No. 6/2002).

  2. Clarity of Registered Design: A registered design must be clearly identifiable, with the illustration making it possible to discern the design that is intended to be protected, based on the CJEU ruling in Mast-Jägermeister SE v EUIPO.

  3. Inventive Step: Assessing inventive step involves considering the prior art from the perspective of a “skilled person,” without assuming that this person knows the destination of the invention.

  4. Overall Impression: For designs, infringement is gauged by whether the contested design produces the same overall impression on an informed user, factoring in the prior art, the designer’s freedom, and specifics like color contrasts, as elaborated in Magmatic Ltd v PMS International Group plc.

  5. Amendment of Patents: The court permitted amendments to be made to the patents if the original claims were found to be invalid.

Outcomes

The court concluded that:

  • UK 978, as amended, EP 738, and UK 822 were valid and infringed by Weston Homes PLC.
  • The RRDs 0001, 0004, and 0005 did not represent single designs and were therefore not validly registered. Consequently, they were not infringed by Weston’s products.
  • Legal principles and precedents played a central role in shaping the court’s analysis, particularly in the assessment of whether the designs represented a single article, the issue of clarity in the design registrations, and the determination of inventive steps involving prior art.

Conclusion

In this intricate case linking patent infringement and design validity, the court undertook a thorough examination of the patents and designs in question against the backdrop of established legal principles. The decision reaffirms the necessity for clarity and specificity in design registrations, underscores the importance of the perceived overall impression in design infringement cases, and emphasizes the meticulous process required to assess inventive step and design novelty. The outcome serves to clarify the standards of registrability and infringement for patents and designs within the UK legal framework.

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