Design litigation stats from the English courts make for good news for designers

What do litigation stats concerning design rights tell us about the overall ‘health’ of this IP field? Katfriend Ewan Grist (Bird & Bird), who also blogs here, has analyzed English design decisions over the past 12 years and found that, overall, there is quite a lot for designers and design owners to feel content about. Here’s what he writes:

Design rights are fast stepping out of the shadows of patents and trade marks as an important and versatile set of IP rights to businesses in almost all sectors. No longer just seen as the preserve of the fashion, consumer and luxury goods industries, creating great product design and protecting it as a core business asset, is now widespread even in more tech-driven areas such as computer hardware/software, medical devices, engineering and aviation. Companies are investing in creating good product design because it matters more than ever before in an increasingly image-conscious world. Design is not just about how the product looks but can also serve as a crucial indication of quality and even as an indication of trade origin. 

Whilst companies from all sectors are undoubtedly starting to recognise the value and versatility of design rights, in the UK at least, a myth still persists in some quarters that design rights are somehow harder to enforce successfully than other IP rights. There are perhaps two reasons for this misconception. 

The first is that probably the four highest profile design cases in the UK in recent years (Procter & Gamble Co v Reckitt Benckiser (UK) Ltd [2007] EWCA Civ 936, Dyson v Vax [2011] EWCA Civ 1206, Samsung Electronics (UK) Ltd v Apple Inc [2012] EWCA Civ 1339, and PMS International Limited v Magmatic Limited [2016] UKSC 12 (i.e. Trunki) have all resulted in findings of ‘valid but not infringed’. Trunki in particular, the only Community design case to have yet been heard by the Supreme Court, was widely publicised, and also widely criticised (albeit perhaps unfairly) for reaching what much of the public considered to be the ‘wrong’ result. These four well known design cases, all with the same outcome, have undoubtedly lent weight to the perception that the English courts are reluctant to find infringement. 

The second reason is harder to discount. Generally speaking, the English courts have tended only to grant a relatively narrow scope of protection to design rights, meaning that the defendant’s product needs to be relatively close to infringe. The exact scope of protection to be afforded to a given design will of course depend on the facts, but generally only those designs without significant design freedom constraints and/or those which are radically different from the pre-existing design corpus will be afforded a wide scope of protection. Few designs can claim both. There may also be an unspoken rationale for the courts affording a relatively narrow scope of protection to particularly registered designs: registered EU and UK rights are granted without any substantive examination, without any proof of creation/entitlement, without any limitation to a field of use and without any requirement for the applicant even to use the design in question. In such circumstances, it is perhaps a reasonable quid pro quo that the scope of protection for such a right should be narrowly construed. 

But is this perception that design rights are somehow harder to enforce than other IP rights anchored in the statistics? Over the last 12 years, we have logged details of all judgments (of which we have been aware) which have been handed down by the English courts (Intellectual Property Enterprise Court (IPEC), High Court, Court of Appeal or Supreme Court) in actions in which some form of ‘design’ was alleged to have been infringed. This includes both registered and unregistered design right, and also artistic copyright relating to a physical product. In total, we count there have been 35 such cases, starting with Green Lane Products Ltd v PMS International Group plc ([2007] EWHC 1712 (Pat)) in 2007 right through to PulseOn Oy v Garmin (Europe) Limited [2019] EWCA Civ 138 earlier this year. Many more cases will of course have been settled or discontinued before a judgment could be given, and these cases are obviously outside of the scope of this analysis. 

As expected, particularly given the versatility of the different kind of design rights, in many cases more than one type of right was asserted. Overall, just under 40% of these rights were registered designs, compared to just over 60% unregistered rights. This demonstrates the great importance which the unregistered designs regimes play in the UK. 

As one might expect, there is a strong showing for designs related to Fashion & Clothing and Homewares, but also a significant number of designs relating to the Medical, Health & Beauty Devices, and Automotive & Aviation fields, reflecting perhaps the increased recognition of the importance of design protection in these fields. 

The statistics show that a significant majority of design cases are started in the IPEC. This may be attributed to the generally lower complexity and value of an average design infringement case, and/or the attraction of the IPEC costs cap to the parties. (Harder to explain is that design cases brought in the IPEC appear to have a slightly higher success rate than those in the High Court: 85% compared to 57%). 

And the winner is… 

Whilst not necessarily telling the full picture about the outcome of the case, we define ‘winning’ for present purposes as meaning that one or more of the rights asserted was found to be both valid/subsisting and infringed. 

The average success rate (across all asserted rights) was 66%. That this win rate was surprisingly consistent across all types of right, suggesting that the need to prove copying in unregistered design and copyright cases has not proven to be significant burden in most cases. 

The fact that two thirds of claimants have succeeded in their claims should hopefully go some way to dispelling the myth that it is unduly difficult to succeed on design cases before the English courts. It is hoped that the English courts will increasingly be widely regarded as an experienced, reliable and consistent forum in which to litigate designs.