Barber v Wakefield & Ors [2024] EWHC 3058 (IPEC) (28 November 2024)

Barber v Wakefield & Ors [2024] EWHC 3058 (IPEC) (28 November 2024)

Although the Prototype does not produce a different overall impression from the Registered Design, the acts of making, using, and supplying the Prototype were done privately and not for commercial purposes, so no infringement occurred under s.7A(2)(a) of the Registered Designs Act 1949. However, if the defendants were to market the Prototype commercially, it would infringe the Registered Design.

Citation
[2024] EWHC 3058 (IPEC)
Parties
Claimant: Simon Barber; First Defendant: Steven Francis Wakefield; Second Defendant: Ultimate Tools Limited; Third Defendant: Simon Wakefield
Jurisdiction
England and Wales
Judgment Date
28 November 2024
Procedural Posture
Registered Design Infringement Claim / Judgment After Trial
Outcome
Claim dismissed; injunction granted to restrain future infringement; no order as to costs.
Legal Topics
Registered Designs, Design Infringement, Technical Function Exception, Must Fit Exception, Injunctions
Intellectual Property Registered Designs Design Infringement Technical Function Exception Must Fit Exception Injunctions

Case Brief

Summary, issues, holding and outcome

More case intelligence is available

Unlock the full research layer for this judgment.

Full judgment text Downloadable case file Legal principles 4 Authorities cited 6 Party arguments 2
Sign in to unlock

Parties

Simon Barber

Claimant

Steven Francis Wakefield

First Defendant

Ultimate Tools Limited

Second Defendant

Simon Wakefield

Third Defendant

Procedural Posture

Registered Design Infringement Claim / Judgment After Trial

Legal Issues

  1. 1 Whether the Registered Design was new as of 19 February 2013
  2. 2 Whether the Registered Design has individual character
  3. 3 Whether any features of the Registered Design are features of appearance solely dictated by technical function

Ratio Decidendi

Although the Prototype does not produce a different overall impression from the Registered Design, the acts of making, using, and supplying the Prototype were done privately and not for commercial purposes, so no infringement occurred under s.7A(2)(a) of the Registered Designs Act 1949. However, if the defendants were to market the Prototype commercially, it would infringe the Registered Design.

Court Disposition

Claim dismissed; injunction granted to restrain future infringement; no order as to costs.

Orders

  • Injunction granted restraining the defendants from marketing letter box tools of the same or sufficiently similar shape as the Registered Design until its expiry.
  • No order as to costs.