The importance of keeping records – a UK company has succeeded in defending an infringement claim by relying on its own historic database of designs.

The plaintiff designed a new food carton for wraps and supplied these to sandwich manufacturer, Buckingham Foods. In 2008, Buckingham stopped ordering from the plaintiff and started buying a similar product from the defendant. The plaintiff sued for infringement of its unregistered community design right because the design of the cartons was so similar. The defendant argued that one of its designers had designed two cartons in 2005 and these designs were used as a basis for the ones they subsequently produced for Buckingham in 2008.

There will only be infringement if a design is copied so as to produce articles exactly or substantially similar. In the Judge’s view, the cartons produced for Buckingham were “clearly very similar, although not identical” but the defendant was able to demonstrate that most aspects of its design for Buckingham were in fact derived from its 2005 design. This swung the case in favour of the defendant.

While the Judge found that the dimensions of the 2005 design needed to be adjusted, he ruled that the particular dimensions which were derived from the plaintiff’s design were not sufficient to infringe. The defendant was therefore successful in relying on its own database of prior designs to prove that it had not copied. Without this evidence, an inference of copying would have existed which the defendant may have found difficult to counter.

This decision illustrates the importance of keeping records and the need to keep at least a register of past designs, whether they were ultimately used or not. It is a warning to any manufacturing company to be organised in identifying, gathering and storing its intellectual property records – a simple task, but as this case shows one which is definitely worthwhile.

Contributed by Louise Butler, Carol Plunkett.

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