UK unregistered design rights do not protect against overseas manufacture of goods

The Satco Plastic Ltd v Super Pack Ltd ([2013] EWPCC 29) ruling confirms that the overseas manufacture of goods does not amount to primary infringement of UK unregistered design rights, even when the goods in question are made with the singular purpose of being imported into the United Kingdom. This Patents County Court judgment preserves the territorial nature of these IP rights and adheres to the general principal that the motives of an alleged infringer are irrelevant in the determination of infringement of IP rights.        

Satco Plastics Ltd, a manufacturer of plastic containers, brought an action against Super Pack Ltd in July 2012. Satco claimed that Super Pack had infringed its UK unregistered design rights in plastic microwave containers by making plastic containers with similar nesting and stacking features in China. 

Satco complained of infringement of its unregistered design rights under Section 226 of the Copyright, Designs and Patents Act 1988. Satco’s case was built around the central submission that such infringement could occur on the basis that articles exactly or substantially similar in design to its plastic microwave containers were being made overseas and, as a second-line argument, that such overseas manufacture would be infringing if the articles were made with the sole intention of being imported into the United Kingdom.

Satco did not make any arguments in respect of secondary infringement stemming from the importation or sale of Super Pack’s containers in the United Kingdom.

The court rejected Satco’s main submission that overseas manufacture of articles exactly or substantially similar to a design in which UK design rights exist amounts to an infringement of those rights. This submission, in the view of the court, does not conform to the definition of the relevant infringing article under Section 226 of the Copyright, Designs and Patents Act 1988 and is inconsistent with the fact that this legislation expressly prescribes the countries to which it extends. In addition the court determined this submission to be contrary to the deep-seated principle that design rights are territorial.

The court also rebuffed Satco's fall-back submission that the manufacture of identical or similar articles abroad, with the singular purpose of importing those articles into the United Kingdom, was a primary infringement of UK unregistered design right. The court commented that primary infringement of design rights is not usually reliant on the motive of the alleged infringer.

Satco was hampered throughout by the fact that it was unable to refer the court to any legal authority or academic commentary supporting its submissions.

After determining that Satco’s claim of primary infringement had failed, the court went on to consider whether the features in Super Pack’s containers were copied from Satco since evidence and arguments on this topic had been heard. The judge’s findings in this regard are simply commentary and do not have any bearing on the decision of the court to dismiss the action.

This is a clear-cut judgment, firmly stating that UK unregistered design rights do not provide protection against the overseas manufacture of articles in which the right subsists. In order to protect unregistered designs in the UK against overseas copying rights holders should monitor the UK market to identify infringing products should they be imported and mount a case in respect of secondary infringement.

Keo Shaw, McDermott Will & Emery UK LLP, London