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Territoriality of Unregistered Design Rights

In dismissing an action in respect of alleged unregistered design rights in a range of plastic microwave containers, the Patents County Court has emphasised that such rights are territorial in nature and that a claim of primary infringement in relation to goods manufactured outside the UK was therefore misconceived.

The claimant argued that containers manufactured in China and marketed in the UK by the defendants were substantially copied from its products in which design rights subsisted. In circumstances where allegations of passing off had been abandoned and the claimants did not pursue a claim of secondary infringement by importation or sale, the dispute squarely raised an issue as to whether the manufacture of articles overseas can amount to primary infringement of UK unregistered design rights.

Answering that question in the negative, the court noted that the claimant’s submissions were not supported by authority or any academic writings and, if correct, would have very far reaching consequences.  The claimant’s case was inconsistent with the definition of ‘infringing article’ within section 228(3) of the Copyright Designs and Patents Act 1988 and ‘flew in the face of’ section 255, which prescribes the countries to which the relevant provisions extend.

The claimant’s arguments were also in conflict with the long-established tenet that intellectual property rights of the kind in issue are territorial and the court went on to rule that, in any event, it was more likely than not that the Chinese containers were produced without copying anything from the claimant’s design.