Through the letterbox injunction awarded in registered design dispute Barber v. Wakefield

In a succinctly reasoned 10 pages of judgment, His Honour Judge Hacon has dismissed a claim for registered design infringement about a tool for getting a key through a letterbox and up to the lock on the inside of a door.

Judge Hacon’s analysis in Barber v. Wakefield & Ors [2024] EWHC 3058 (IPEC) addressed a range of infringement issues, demonstrating the availability of low-cost, high-quality dispute resolution for small and medium-sized enterprises (SMEs) in the High Court’s Intellectual Property Enterprise Court.

Barber’s claim was for infringement of a UK-registered design (no. 4028780). For the general principles on the assessment of infringement, Judge Hacon drew upon Cantel v. ARC [2018] EWHC 345 (Pat) and M&S v. Aldi [2023] EWHC 178 (IPEC), summarising:

“The court must:

(1) Decide the sector to which the products in which the designs are intended to be incorporated or to which they are intended to be applied belong;

(2) Identify the informed user and having done so decide (a) the degree of the informed user’s awareness of the prior art and (b) the level of attention paid by the informed user in the comparison, direct if possible, of the designs;

(3) Decide the designer’s degree of freedom in developing his design;

(4) Assess the outcome of the comparison between the RCD and the contested design, taking into account

(a) the sector in question,

(b) the designer’s degree of freedom,

(c) the overall impressions produced by the designs on the informed user, who will have in mind any earlier design that has been made available to the public,

(d) that features of the designs that are solely dictated by technical function are to be ignored in the comparison.

(e) that the informed user may in some cases discriminate between elements of the respective designs, attaching different degrees of importance to similarities or differences; this can depend on the practical significance of the relevant part of the product, the extent to which it would be seen in use, or on other matters.”

The ‘informed user’ for the purposes of the case was taken as “locksmiths, security agents, and sometimes by the police.”

The devices alleged to infringe were prototype devices. Wakefield explained that four had been made. Images of two were available to the court. A ‘prototype’ had been made public in social media posts and at a trade fair. Judge Hacon said that these making public activities were not acts of infringement. He doubted it had been the intention of Parliament or the European legislature that a person who has done nothing but receive a product and shown it to others in public should be held to have committed an act of infringement.

The acts of infringement complained of were ‘making’ and ‘using’ for the business of the second defendant, and a single offer to supply one of the prototypes to a Master Locksmith known to Wakefield so that he could test it and provide feedback.  

Judge Hacon was satisfied that the making had not been public, and the use made of the prototypes had not been public. Nor was there any reason to think that anyone other than the defendants had been aware of the supply to Alder. Judge Hacon’s understanding of Wakefield’s evidence was that “neither the making and using of the Prototypes nor their supply to Alder were done for commercial activities.” Therefore, the infringing acts complained of all benefited from the defense provided in the Registered Designs Act 1949 (RDA) section 7A(2)(a).

(However, the experimental purposes defense provided by s.7A(2)(b) RDA did not operate. It would stretch the term ‘experimental purposes’ to include “the exploration of marketing potential, as opposed to the more obvious meaning of experiments to explore an article’s performance in use.”)

Consequently, there had been no infringement. However, Judge Hacon was satisfied that Wakefield’s prototype(s) did not create a different overall impression on the informed user than that of Barber’s registered design. Wakefield had said that if the court were to find that he was free to market letterbox tools like his prototype, he would consider taking it forward. This meant there was a threat sufficient to warrant the award of an injunction, applicable until the registered design expired. Judge Hacon added that the defendants would be wise to ensure that any letterbox tool they market “looks conspicuously different” from Barber’s registered design.

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