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

Author:Ms Fiona Russell
Profession:Jones Day Gouldens
 
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Patents County Court - 31 October 2002

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 Registered Design

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.

Validity

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...

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