Foreign Umbrellas Offer No Shelter

Profession:Herbert Smith

Commonplace defined for Unregistered Design Right

On 31st October 2002 the English Patents County Court gave judgment in a case that may have important practical consequences for the conduct of Unregistered Design Right cases in the United Kingdom. In particular, the court sought to limit the scope of the "prior art" that can be relied upon by a Defendant who argues that a Claimant's design is not entitled to protection because it is "commonplace".

The facts of the case

Since 1995, Fulton had been importing and selling in the UK foldaway umbrellas together with a protective storage case called the Miniflat. The Miniflat case was characterised principally by its 'flat', rectangular construction and pronounced seams. Fulton complained to the Patents County Court that another UK umbrella company, Totes, had also been importing and selling in the UK a number of umbrellas in cases that were substantial copies of the Fulton Miniflat, thus infringing its Unregistered Design Right ("UDR").

Subsistence of design right

UDR is a property right that subsists in a design automatically upon its creation, providing certain criteria are satisfied. In particular, the design must be original. A design is not original if it is "commonplace" in the relevant design field at the time of its creation. Determining whether a design is commonplace requires comparing the similarities and differences, and their significance, between the design to be protected and similar designs existing in the same design field (in this case designs of umbrella cases).

Totes had found umbrella cases on the market in Australia and Japan (but not in the UK) that they believed to be almost identical to the Miniflat. They therefore argued that designs of umbrella cases available outside the UK should be included in an assessment of whether the Miniflat was "commonplace".

Judge Fysh QC remarked that UDR is a peculiarly British species of intellectual property, which has no international dimension. Therefore, an enquiry on commonplace should be limited to the UK. He thought this limitation...

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