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

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 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.

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:

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.