infringement was not proven itself. The case concerned of both registered and unregistered design rights subsisting in electric shower unit. The court accepted the evidence of an independent design process provided by a designer of Bristan (defendant). Although the designer himself had no knowledge of the claimant’s design, the senior members of Bristan know about the claimant’s design but failed to stop the production. Thus, it is enough to suffice the infringements to UK UDRs of Kohler. In relation to the RCDs, no infringement to be found, there are indeed some common features shared by the products, but not enough to create the same overall impression. The Kohler case is a prime example demonstrating how far the court is prepares to go to protect the UDRs, and more importantly, to reiterate and strengthen the value of this type of IP right to designers.
Registered design right and protection
The UK registered design and EU community registered design are the two-registered design rights enforceable in the UK. Registration should be filed within 12 months of the product being first marketed, with a term of protection up to 25 years, renewal is required in every five years. Design is defined in the regulation as ‘the appearance of the whole or a part of a product resulting from the features of, in particular the lines, contours, colours, shape, texture and/or materials of the product itself and/or its ornamentation’. It is the graphical identifications being protected, but not the idea behind the design. A design that serves purely technical or functional purposes may rather be protected under the short-term unregistered design scheme .
A registered design is valuable to the UK designers, giving them a monopoly right to exclude both the bona fide and mala fide third party from producing products that incorporated his registered design. Otherwise, the right owner may commence infringement proceeding; given the incorporation of design by a third party was for commercial purposes, non-teaching purposes or non-experimental purposes. There is a complete list of commercial activities that constitute infringements, these are making, offering, putting the infringing product on the market; imports, exports or using a product applying the design. Stocking of the products for any these purposes is also prohibited . Since the harmonisation of registered design, there are four cases about infringement of UK registered designs and community-registered designs have been heard in the Court of Appeal, yet no infringement is found by far. A recent Supreme Court judgement handed down in the high profile case of PMS international v Magmatic limited , raises the concern of the difficulty to enforce a registered design right in the UK, and to what extend the right of a designer is protected.
