UK: Designs - A. Fulton Company Ltd -v-Totes Isotoner (UK) Ltd

Last Updated: 20 November 2002
Article by Fiona Russell

Patents County Court - 31 October 2002

Gouldens acted for the successful claimant A. Fulton Company Ltd, the second time we have represented the company in a successful infringement action of their design right in umbrellas and cases for umbrellas. This time their registered design was also at issue.

Both the registration and the design right were for a cloth case for a portable foldaway umbrella originally known as the "Miniflat".

Fulton is one of only three companies in the UK in this market – the other two being the present defendants and the defendants to the previous action Grant Barnett & Co Ltd.

In the previous action Fulton's design right had been found to be both valid and infringed. The same design right was at issue here.

Ultimately the defendants in this case accepted the design history of the Fulton umbrella case and ownership of the design right and registered design. They did, however, contest the subsistence of both.

Two types of umbrella case were said to infringe - the "slit case" and the "cut-out case". The difference between them was that the first two alleged infringements had slits in the cuff of the umbrella case -like the Miniflat case design and the other three had instead of a slit a rectangular cut out portion which occupied an entire narrow side of the cuff. The purpose of both was to make it easier to put an umbrella back into its case.

Totes sold their umbrellas in the cases under their own name and under the "Boots" own name brand. They had apparently been advised by their patent agents to change to the cut out design to avoid infringing the registered design.

In June 1999 Fulton became aware of the infringements and a lengthy correspondence took place between the parties’ respective patent agents.

The Registered Design

The registration was applied for before the latest amendments to the Registered Designs Act and therefore the validity of the registration is tested against the law as it was before those changes ie before 9 December 2001.


Not an "article" – under the old law a design was "any features of shape configuration pattern or ornament applied to an article by any industrial process, being features which in the finished artice appeal to and are judged by the eye,"

An "article" meant "any article of manufacture and includes any part of an article if that part is made and sold separately". Totes alleged that the umbrella case was not a part of an article that was sold separately as it was only sold together with the umbrellas - the shopper could not buy cases by themselves. However there was evidence before the court that umbrella cases do have a separate life of their own, even if a small one, and they are certainly made separately. The judge concluded that the umbrella case is an article of maunfacture which is made and sold separately. The attack on validity based on this argument failed.

Lack of novelty – Totes attacked novelty on the basis of alleged prior art and on the basis that the slit in the cuff was a "variant common to the trade" and thus not capable of imparting novelty to a published design.

The judge held that the design was valid over the alleged prior art.

Under section 1(4) of the old RDA a design was not to be regarded as new if it is the same as a design published in the UK in respect of the same or any other article before the application date or it differs from such design only in immaterial details or in features which are variants commonly used in the trade." Totes argued that the slit in the cuff was just such a variant and could not make what they alleged to be an old design new. The judge found that there was no common use of slits and they were not variants commonly used. This attack also failed.

The Registration was valid.


The test was whether the Totes cases embodied a design "not substantially different" from the registered design. In respect of the two cases with slits in the cuff – the registration was infringed but it was not infringed by the three "cut out" cases which made a substantial difference to the eye.

Design Right

The issues had in the main all been dealt with previously by Park J in the earlier case against Grant Barnett and therefore as the judge now said "It may therefore come as some surprise to learn that the subsistence of the same design right was again under intense challenge in this action." However by the close of this case the live issues under subsistence had been narrowed considerably.

The design claimed was:

(a) the design of the whole of the case (irrespective of precise dimensions); alternatively

(b) the design of that aspect of it which consists of the whole of it (irrespective of precise dimensions) minus the shorter side of the cuff adjacent to the vent or slit.

The first argument was that (b) was not the design at issue it was a separate design. No said the judge – in design right it is possible for a claimant to "trim or "crop" the design in issue to match what he considers the defendant to have taken".


Totes did not pursue arguments on authorship, originality, and reserved their position on methods or principles of construction so the only argument dealt with at trial was whether the design was "commonplace" and therefore not entitled to protection.

The judge held that the "art" against which the design should be tested should be limited to that available in the UK and not worldwide. Totes relied on a case manufactured and sold by them throughout the 1970's: the case originated from the US parent company and the judge found it to be irrelevant in the absence of evidence to show that it had been marketed in the UK of which there was none. This case had not been cited in the Grant Barnett case but in any event the judge also held that the case design was distinctly different to Fulton's design and was not therefore relevant.

Two other overseas citations were also held irrelevant on that basis and in addition, one because it was not sufficiently similar the other because there was doubt as to whether it was available before the date of Fulton’s design.

Another citation was dismissed on the same ground as in the Grant Barnett case and was held not to be commonplace in the UK at the date of Fulton's design as it had in fact become a museum piece and was not enough to render Fulton's design commonplace.

The final citation, also raised in the earlier case was also held not to render the design commonplace.

The design was therefore not commonplace.


The infringement alleged was secondary – importation

of infringing articles.

As a result of cross-examination of Toutes’ witnesses copying was conceded and Toutes’ "slit" cases were held to infringe the first design and the "cut out" the second.

There were other issues of estoppel and Fultons’ entitlement to additional damages but neither succeeded.

Both Fulton's registered and unregistered designs were held valid and infringed.

This article highlights current legal developments. It is not a substitute for proper advice.

To print this article, all you need is to be registered on

Click to Login as an existing user or Register so you can print this article.

In association with
Up-coming Events Search
Font Size:
Mondaq on Twitter
Register for Access and our Free Biweekly Alert for
This service is completely free. Access 250,000 archived articles from 100+ countries and get a personalised email twice a week covering developments (and yes, our lawyers like to think you’ve read our Disclaimer).
Email Address
Company Name
Confirm Password
Mondaq Topics -- Select your Interests
 Law Performance
 Law Practice
 Media & IT
 Real Estate
 Wealth Mgt
Asia Pacific
European Union
Latin America
Middle East
United States
Worldwide Updates
Check to state you have read and
agree to our Terms and Conditions

Terms & Conditions and Privacy Statement (the Website) is owned and managed by Mondaq Ltd and as a user you are granted a non-exclusive, revocable license to access the Website under its terms and conditions of use. Your use of the Website constitutes your agreement to the following terms and conditions of use. Mondaq Ltd may terminate your use of the Website if you are in breach of these terms and conditions or if Mondaq Ltd decides to terminate your license of use for whatever reason.

Use of

You may use the Website but are required to register as a user if you wish to read the full text of the content and articles available (the Content). You may not modify, publish, transmit, transfer or sell, reproduce, create derivative works from, distribute, perform, link, display, or in any way exploit any of the Content, in whole or in part, except as expressly permitted in these terms & conditions or with the prior written consent of Mondaq Ltd. You may not use electronic or other means to extract details or information about’s content, users or contributors in order to offer them any services or products which compete directly or indirectly with Mondaq Ltd’s services and products.


Mondaq Ltd and/or its respective suppliers make no representations about the suitability of the information contained in the documents and related graphics published on this server for any purpose. All such documents and related graphics are provided "as is" without warranty of any kind. Mondaq Ltd and/or its respective suppliers hereby disclaim all warranties and conditions with regard to this information, including all implied warranties and conditions of merchantability, fitness for a particular purpose, title and non-infringement. In no event shall Mondaq Ltd and/or its respective suppliers be liable for any special, indirect or consequential damages or any damages whatsoever resulting from loss of use, data or profits, whether in an action of contract, negligence or other tortious action, arising out of or in connection with the use or performance of information available from this server.

The documents and related graphics published on this server could include technical inaccuracies or typographical errors. Changes are periodically added to the information herein. Mondaq Ltd and/or its respective suppliers may make improvements and/or changes in the product(s) and/or the program(s) described herein at any time.


Mondaq Ltd requires you to register and provide information that personally identifies you, including what sort of information you are interested in, for three primary purposes:

  • To allow you to personalize the Mondaq websites you are visiting.
  • To enable features such as password reminder, newsletter alerts, email a colleague, and linking from Mondaq (and its affiliate sites) to your website.
  • To produce demographic feedback for our information providers who provide information free for your use.

Mondaq (and its affiliate sites) do not sell or provide your details to third parties other than information providers. The reason we provide our information providers with this information is so that they can measure the response their articles are receiving and provide you with information about their products and services.

If you do not want us to provide your name and email address you may opt out by clicking here .

If you do not wish to receive any future announcements of products and services offered by Mondaq by clicking here .

Information Collection and Use

We require site users to register with Mondaq (and its affiliate sites) to view the free information on the site. We also collect information from our users at several different points on the websites: this is so that we can customise the sites according to individual usage, provide 'session-aware' functionality, and ensure that content is acquired and developed appropriately. This gives us an overall picture of our user profiles, which in turn shows to our Editorial Contributors the type of person they are reaching by posting articles on Mondaq (and its affiliate sites) – meaning more free content for registered users.

We are only able to provide the material on the Mondaq (and its affiliate sites) site free to site visitors because we can pass on information about the pages that users are viewing and the personal information users provide to us (e.g. email addresses) to reputable contributing firms such as law firms who author those pages. We do not sell or rent information to anyone else other than the authors of those pages, who may change from time to time. Should you wish us not to disclose your details to any of these parties, please tick the box above or tick the box marked "Opt out of Registration Information Disclosure" on the Your Profile page. We and our author organisations may only contact you via email or other means if you allow us to do so. Users can opt out of contact when they register on the site, or send an email to with “no disclosure” in the subject heading

Mondaq News Alerts

In order to receive Mondaq News Alerts, users have to complete a separate registration form. This is a personalised service where users choose regions and topics of interest and we send it only to those users who have requested it. Users can stop receiving these Alerts by going to the Mondaq News Alerts page and deselecting all interest areas. In the same way users can amend their personal preferences to add or remove subject areas.


A cookie is a small text file written to a user’s hard drive that contains an identifying user number. The cookies do not contain any personal information about users. We use the cookie so users do not have to log in every time they use the service and the cookie will automatically expire if you do not visit the Mondaq website (or its affiliate sites) for 12 months. We also use the cookie to personalise a user's experience of the site (for example to show information specific to a user's region). As the Mondaq sites are fully personalised and cookies are essential to its core technology the site will function unpredictably with browsers that do not support cookies - or where cookies are disabled (in these circumstances we advise you to attempt to locate the information you require elsewhere on the web). However if you are concerned about the presence of a Mondaq cookie on your machine you can also choose to expire the cookie immediately (remove it) by selecting the 'Log Off' menu option as the last thing you do when you use the site.

Some of our business partners may use cookies on our site (for example, advertisers). However, we have no access to or control over these cookies and we are not aware of any at present that do so.

Log Files

We use IP addresses to analyse trends, administer the site, track movement, and gather broad demographic information for aggregate use. IP addresses are not linked to personally identifiable information.


This web site contains links to other sites. Please be aware that Mondaq (or its affiliate sites) are not responsible for the privacy practices of such other sites. We encourage our users to be aware when they leave our site and to read the privacy statements of these third party sites. This privacy statement applies solely to information collected by this Web site.

Surveys & Contests

From time-to-time our site requests information from users via surveys or contests. Participation in these surveys or contests is completely voluntary and the user therefore has a choice whether or not to disclose any information requested. Information requested may include contact information (such as name and delivery address), and demographic information (such as postcode, age level). Contact information will be used to notify the winners and award prizes. Survey information will be used for purposes of monitoring or improving the functionality of the site.


If a user elects to use our referral service for informing a friend about our site, we ask them for the friend’s name and email address. Mondaq stores this information and may contact the friend to invite them to register with Mondaq, but they will not be contacted more than once. The friend may contact Mondaq to request the removal of this information from our database.


This website takes every reasonable precaution to protect our users’ information. When users submit sensitive information via the website, your information is protected using firewalls and other security technology. If you have any questions about the security at our website, you can send an email to

Correcting/Updating Personal Information

If a user’s personally identifiable information changes (such as postcode), or if a user no longer desires our service, we will endeavour to provide a way to correct, update or remove that user’s personal data provided to us. This can usually be done at the “Your Profile” page or by sending an email to

Notification of Changes

If we decide to change our Terms & Conditions or Privacy Policy, we will post those changes on our site so our users are always aware of what information we collect, how we use it, and under what circumstances, if any, we disclose it. If at any point we decide to use personally identifiable information in a manner different from that stated at the time it was collected, we will notify users by way of an email. Users will have a choice as to whether or not we use their information in this different manner. We will use information in accordance with the privacy policy under which the information was collected.

How to contact Mondaq

You can contact us with comments or queries at

If for some reason you believe Mondaq Ltd. has not adhered to these principles, please notify us by e-mail at and we will use commercially reasonable efforts to determine and correct the problem promptly.