Muck flies in design rights appeal

A dispute over unregistered design rights in the Court of Appeal has broken new ground in intellectual property law.

The machine at the centre of the dispute is a slurry separator, designed to displace the dung heap and the muck-spreader from the English rural landscape.

In March 1997, Farmers Build, which marketed the separator, claimed that Carier Bulk Materials Handling had infringed its design rights.

Mr Justice Rattee, while recognising Farmers Build's rights to the design in both the shape and configuration of the whole and parts of the Target slurry separator, ruled that the company was not entitled to damages from Carier for infringement of those rights.

He held that Farmers Build, even though it was not outside the limitation period, had dragged its heels in launching litigation.

It was argued that the company had waited to see how well the device sold before launching litigation, and that in those circumstances it had acquiesced to what had taken place.

Farmers Build appealed and Carier cross-appealed against the finding of the existence of design rights.

In the Court of Appeal, Lord Justice Mummery rejected the ruling that Farmers Build had delayed in launching litigation, and said that it had brought its proceedings for infringement within the limitation period.

He said the effect of the judgment was that delay in bringing proceedings meant that a claim was as good as statute barred, even before the expiration of the limitation period.

On the cross-appeal challenge over the existence of design rights, the appeal court held that the rights did in fact exist.

"Farmers Build has only claimed design right in parts and in combinations of parts which make up a small part of the entire machine.

"But that does not prevent there being a design right in the overall shape and configuration of the combination of parts which make up the whole," the court said.

"A whole assembly of parts, even if all the individual parts are commonplace, is not itself commonplace if the result is to produce a slurry separator of an overall design different from the overall design of other slurry separators."

Margaret Briffa of Briffa & Co, which acted for plaintiffs and later appellants, Farmers Build throughout, says the case has focused on the all-important meaning of the term "commonplace" under section 213(4) of the Act.

In spite of its importance, it has taken 10 years – that is, since the introduction of unregistered design right into English law under part three of the Copyright Designs and Patents Act 1988 – for such a test to take place.

Lord Justice Mummery said that while the mass of intellectual property litigation prior to the 1988 Act has been branded by one IP academic as a "merry litigious bonanza", this was the first case of design right to reach the Court of Appeal.

Briffa says that in intellectual property circles this is a signpost ruling from the Court of Appeal on an area of law that has never previously been tested to that level.

"The court found that provision as to the word "commonplace" was not to impose a requirement of novelty in order to secure the limited protection enjoyed by registered designs, but to guard against situations in which the short-term protection for functional designs would create practical difficulties.

"The comparative exercise with other designs, to establish whether a design is commonplace, must be conducted objectively, and no amount of guidance given by experts or witnesses can provide the court with an answer to the particular case. It is a question of fact and degree."

Briffa says the case is ensured a place in the history of intellectual property law and that it is one which will be quoted for years to come.