The “innocent infringer” defence for the infringement of UK unregistered design rights (UDRs) was recently tested in the Intellectual Property Enterprise Court (IPEC). This short summary provides some useful guidance on the lessons to be learned, including when to introduce such a defence and the chances of its success.
The claimants, Kohler Mira Limited (“Mira”) filed a claim of infringement in relation to two registered Community designs (RCDs) and a number of UK unregistered design rights (UDRs) subsisting in an electric shower unit called ‘Azora’. During the main trial, the defendants, Bristan Group Limited (“Bristan”) were adjudged not to have infringed the RCDs. However, Bristan were held to have infringed Mira’s UK UDRs.
During the subsequent inquiry as to damages, Bristan claimed that they had unintentionally infringed the UDRs and were therefore an “innocent infringer”. If successfully claimed, an “innocent infringer” is not liable for damages (but without prejudice to other remedies, such as an account of profits).
Bristan’s decision to delay a plea of innocence raised two questions:
In short, the answer to the first question (1) was ‘no’. Although the Judge appeared to agree with Bristan that the “innocent infringer” defence is only concerned with damages and not with infringement, the Judge decided not to exercise his discretion to allow such a late claim. It was considered not to be fair on Mira. If, for example, Mira had known before the trial on liability (the main trial) that Bristan were going to use the “innocent infringer” defence, Mira may have been more amenable to settlement.
Furthermore, if the “innocent infringer” defence had have been raised earlier, together with a request to postpone the innocence discussion until the inquiry as to damages (as a matter of procedural economy), then the Judge would have listened to Bristan’s arguments. However, on the face of it, Bristan was not entitled to rely on the “innocent infringer” defence because the claim was raised after the main trial had ended.
Although the answer to question (1) was negative, the Judge usefully addressed the points raised by the second question (2) by turning to the legal test of an “innocent infringer”, namely:
Bristan argued that the only way for a reasonable man to conclude whether or not UDR subsisted in the ‘Azora’ unit was if sufficient relevant facts about the UDR were communicated to Bristan, for example, by means of marking the article or by sending a letter. The Judge, however, failed to agree with this line of argument given it would place an “unreasonable burden” on all owners of UDRs because there would be no other means of inferring that UDR subsisted.
A reasonable man is presumed to know that “industrial articles are commonly protected by UDRs”, whereas a “stone from a beach” can be presumed to be free from UDR. A reasonable man is deemed familiar with UDR law and it is “part of reasonable make up” to know that industrial articles are commonly protected by UDRs. This presumption seems to place a somewhat heavy burden on proving an “innocent infringer” defence. The onus is seemingly placed upon the reasonable man to conclude that UDR does not subsist and to show that there is no reason to believe that it does. Bristan knew about the law related to UDRs but pleaded that there was no copying because they did not know that UDRs subsisted in the ‘Azora’. This not surprisingly fell short of the “innocent infringer” bar and the Judge dismissed the claim.
An “innocent infringer” defence can be used in relation to UK registered and unregistered designs but cannot currently be used in relation to Community (European) registered and unregistered designs. This lack of harmony is likely to change in favour of the current UK UDR approach*. Therefore, if implemented, an “innocent infringer” would not be liable for damages for infringing acts in the UK when unintentionally infringing any UK or Community registered or unregistered design, but the “innocent infringer” may be liable for an account of profits.
Practically speaking, these changes would make it even more important for design right owners to mark articles with appropriate design right notices, in order to seek to prevent a successful “innocent infringer” defence.
In summary, an “innocent infringer” defence has been shown to be particularly tricky to rely upon. However, when engaged in infringement proceedings (whether as a Claimant or Defendant), it is highly advisable to show ‘all of your cards’ as early as possible. This includes a claim for an “innocent infringer” defence because pleading such at a relatively late stage (such as during the inquiry as to damages), is unlikely to be successful.
If you would like any advice on design rights or those of others, please contact one of our members of our Design Team.
* Consultation on amendments to design legislation – Formal response document as issued by the UK Intellectual Property Office’ - http://www.ipo.gov.uk/pro-policy/consult/consult-closed/consult-closed-2010/consult-2010-desleg.htm
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