The case concerned the design of a PVA micromesh developed by Elite for use as a bait bag in angling fishing, which was introduced to the market in August 2003. It was alleged by Elite that the design had been copied by R.A.G.S who released a similar product for the fishing market in September 2003. As a result the key issue revolved around Unregistered Design Rights and as such the protection provided by the UK and Community law. Protection under the UK is set out under the Copyright, Designs and Patents Act 1988 (‘CDPA’), this defines design in s 213(2) as
(2) In this Part ‘design’ means the design of any aspect of the shape or configuration (whether internal or external) of the whole or part of an article.
The design is required to original and cannot be protected if it commonplace in the design field. A design right cannot exist if it is original due to the method or principle of construction. The Unregistered Design Right gives the owner the exclusive right to reproduce the design and to prohibit any person from copying the design exactly or substantially similar to that design.
The Community Unregistered Design Right defines designs under Council Regulation no 6/2002, Design being defined as
Article 3 (a) ‘Design’ means the appearance of the whole or a part of a product resulting from the features of, in particular, the lines contours, colours, shape, texture and/or materials of the product itself…
For Community protection to apply the design must be new i.e. no identical design is available to the public, and it must have individual character i.e. giving informed users a different impression from designs available to the public. As with the UK Unregistered Design Right there is an exclusion and the design shall not exist if its appearance is due solely to a technical function.
The issue here was whether the Elite Design would fall foul of the exclusions under both the UK and Community Unregistered Design Rights legislation. The key feature of the Elite Design was the use of a closed open closed Atlas stitch and whether this resulted in a new design with individual character. Under UK Unregistered Design Rights the courts considered the design to be original and not commonplace in the design field, the burden of proof lying with Elite. With regards to Community Unregistered Design Right, the court held the burden of proof to fall on those seeking to impeach the statutory right, regarding the novelty and individual character of the design. Taking this and the Community Regulations into consideration, the court found there was no evidence to suggest a mesh had been made in this manner before, as such the design was considered to be new and have individual character.
It was argued that Elite were attempting to protect not the design but the method and construction of its design, the courts agreed and held that the basic appearance was due to the Atlas stitching and the design right would therefore cover a ‘method or principle of construction’, so the action based on the UK unregistered design right failed. With regards to the Community Unregistered Design Right the court held that protecting the design would not hamper technological innovation as this was not the only design available to anglers with the same degree of usefulness, as a result the exclusion did not apply.
Even though Elite were able to establish the Community Unregistered Design Right the court found that R.A.G.S had established their design was independently produced, and as a result the action failed.