Defendant held to have arrived at same design independently

United Kingdom
In Pro-Tec Covers Ltd v Specialised Covers Ltd [2011] EWPCC 23 (18 October 2011), Richard Meade QC, sitting in the Patents County Court, has provided a detailed judgment on an unregistered design right infringement dispute. The claimant, Pro-Tec Covers Ltd, had alleged that a competitor, Specialised Covers Ltd, had undertaken "a concerted campaign of copying by at least four people, followed by a concerted campaign of lying about it and covering it up". Although the judge could see why the circumstances of this matter could have given rise to suspicions of copying by Specialised Covers, the evidence led to the opposite conclusion.
Pro-Tec designed and sold covers to protect the front face of caravans from dirt and debris whilst being towed. Historically, towing covers consisted of a single sheet of fabric along with straps which would attach to the awning rail of the caravan. A problem with this historic design was that multiple straps needed to be attached to the awning rail. In 2009 Pro-Tec came up with an improvement. Rather than have multiple straps that had to be attached directly from the towing cover to the awning rail, one could have a separate fabric strip (the 'strap strip') which, in essence, was a fabric-covered pole (with straps) which fitted into the awning rail:

The strap strip would co-operate with the main part of the cover by means of the straps:

This was said to make fitting the towing cover easier.

Specialised Covers also sold caravan covers but, prior to the action, did not deal in towing covers. In January 2010 Specialised Covers started work on designing towing covers. Around the same time, an ex-employee of Pro-Tec (Mr Lord) started working as a salesman for Specialised Covers. Lord was said by Pro-Tec to have experience of their design for the strap strip. When Specialised Covers later produced their own strap strip, Pro-Tec alleged that Lord was specifically hired to facilitate the copying of Pro-Tec’s design and, as such, Specialised Covers’s Strap Strip infringed Pro-Tec’s design.

Specialised Covers denied these allegations, stating that Lord was hired for his sales ability and that it had no need to copy, as it was already skilled in designing caravan covers in general.

Due to the serious nature of the allegation made by Pro-Tec, the judge applied the principle in Re H Minors ([1996]) AC 563 that the seriousness of the allegations was an important factor in assessing the balance of probabilities. 

On assessing the evidence, the judge found that it was not compelling enough to allow him to accept such an allegation and outlined several ways in which it was flawed:
  • if Specialised Covers wanted to copy Pro-Tec's design, they would have just bought the product instead of going through the trouble of hiring Lord;
  • towing protectors were not big business;
  • Specialised Covers clearly had the skills and experience to capably design their own product;
  • it was unlikely to put the alleged level of copying into an improvement as minor as the strap strip;
  • Specialised Covers had gone through three variant designs to arrive at the strap strip, a process they would not have needed if their original intention was to directly copy Pro-Tec's design; and
  • the evidence did not point to Specialised Covers knowing about Pro-Tec's strap strip when it hired Lord.
Ultimately, the judge found that Specialised Covers conceived of the general idea of a strap strip for the first time independently of Pro-Tec, and that any similarities between Pro-Tec’s and Specialised Covers' product were explained by their having “broadly the same design logic”.

Although not strictly necessary in view of his finding that there was no copying, the judge considered whether any of the features relied on by Pro-Tec were excluded from protection under the 'must fit' or 'method or principle of construction' exclusions in Section 213 of the Copyright, Designs and Patents Act 1988. He found that some were, but not all. 

Notably, the judge found that the case law on the 'must fit' exclusion was “directed primarily, if not exclusively, at interfaces” and, as such, only that part of the strap strip that slotted into the awning rail would have been excluded. The strap strip as a whole was not a 'must fit' feature, as there were a number of ways the cover could be held in place. 

Robert Lundie Smith, McDermott Will & Emery UK LLP, London

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