Sales v Stromberg & others
Reference:  EWHC 1624 (Ch);  FSR 7
Court: Chancery Division
Judge: Roger Wyand QC (sitting as a Deputy High Court Judge)
Date of judgment: 29 Jul 2005
Summary: Unregistered designs – Breach of Confidence – Passing Off – Designs Based on Simple Geometric Shapes – Originality Test –s.213(4) Copyright Designs and Patents Act 1988
Instructing Solicitors: Hextalls LLP for the Claimant; Ashfords for the Defendants
This action concerned infringement of design right in respect of articles designed to contain imploded water. There were 2 designs: a double spiral arrangement called ‘Infinity’ and a triple spiral called ‘Trinity’, for a ‘personal harmoniser’, a sealed copper tube pendant containing ‘imploded’ water said to be beneficial to the wearer. The Claimant had sent rough sketches of these designs to the Defendant. However, they failed to agree an appropriate level of royalties and the Defendant proceeded to develop and market similar designs. The Defendant argued that before considering the originality of the designs, the Claimant had first to establish that the drawings and accompanying notes were documents in which design right could subsist. The Judge said that was not the correct approach. Rather, the question was whether the design was commonplace in the design field in question. Although the Claimant’s drawings were crude, the Defendant had been able to make prototypes.
Was an original design for an article, although based on a simple geometric shape, a design capable of protection under the Copyright Designs and Patents Act 1988 (CDPA)?
There is no reason that a simple geometric design cannot be protected as a design for an article, subject to passing the test for originality. The Defendant had failed to establish that the designs were commonplace in the design field of complementary medical devices, including ornamental or decorative devices. Although spirals were common in rock and similar art, the Defendant’s expert had failed to appreciate the distinction between what is ordinarily termed a design (which includes surface decoration) and the definition of a design under the CDPA (a design for an article). The Defendant’s triple spiral design did not infringe the Trinity design, despite a clear causal connection between the two, as it was made from one piece of copper tubing rather than two which necessarily made the design sufficiently different. There was no breach of confidence as the Trinity design had been insufficiently developed to put it into practice.
The skill and labour employed by the Claimant in producing the designs was sufficient to qualify for design right. The Claimants designs were not commonplace for the purposes of s.213(4) of the Copyright Designs and Patents Act 1988.