Simon Barber v Steven Francis Wakefield & Ors

Simon Barber v Steven Francis Wakefield & Ors

The making and use of the prototypes and their supply for testing were not acts of infringement as they were done privately and not for commercial purposes; however, commercial marketing of letter box tools of the same or sufficiently similar shape as the prototype would infringe the Registered Design.

Parties
Claimant: Simon Barber; First Defendant: Steven Francis Wakefield; Second Defendant: Ultimate Tools Limited; Third Defendant: Simon Wakefield
Jurisdiction
England and Wales
Judgment Date
29 November 2024
Procedural Posture
Registered Design Infringement / Final Judgment
Outcome
Claim for infringement dismissed; injunction granted to restrain future commercial marketing of products of the same or sufficiently similar shape as the Registered Design.
Legal Topics
Registered Designs, Design Infringement, Technical Function Exception, Must Fit Exception, Joint Liability, Injunctions
Intellectual Property Registered Designs Design Infringement Technical Function Exception Must Fit Exception Joint Liability Injunctions

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Parties

Simon Barber

Claimant

Steven Francis Wakefield

First Defendant

Ultimate Tools Limited

Second Defendant

Simon Wakefield

Third Defendant

Procedural Posture

Registered Design Infringement / Final Judgment

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

The making and use of the prototypes and their supply for testing were not acts of infringement as they were done privately and not for commercial purposes; however, commercial marketing of letter box tools of the same or sufficiently similar shape as the prototype would infringe the Registered Design.

Court Disposition

Claim for infringement dismissed; injunction granted to restrain future commercial marketing of products of the same or sufficiently similar shape as the Registered Design.

Orders

  • No infringement found for acts done privately and not for commercial purposes.
  • Injunction granted restraining commercial marketing of letter box tools of the same or sufficiently similar shape as the Registered Design until its expiry.