Keeping Your Designs in Good Order

A recent decision of the U.K. Court of Appeal raises interesting issues concerning industrial design registrations. Safestand Ltd v Weston Homes PLC 2025 EWCA Civ 374

The designs in issue related to builders’ trestles which are self-supporting low-level scaffolding structures incorporating horizontal platforms used for the construction and maintenance of buildings, particularly bricklaying and painting.

The Trial

The owner of the registered designs sued for infringement of related patents and the designs.  The claim for patent infringement succeeded but the defendant successfully challenged the validity of each of the registered designs on the grounds: (i) it did not depict the design of a single product; (ii) it lacked clarity.

The trial Judge said that each design shown in the images included with the registrations was not a single design.  In addition, it was impossible to tell with reasonable certainty that each registration was for a single design.  The designs were not validly registered. Safestand Ltd v Weston Homes PLC [2023] EWHC 3250 (Pat)

The Appeal

The owner appealed the finding of invalidity of the designs to the U.K. Court of Appeal.

Court said the validity and the scope of protection of a registered design depends on the proper interpretation of the registration, and of the images in that registration. The design must be interpreted objectively. The circumstances relating to the conduct of the proprietor of the design, and by extension the intention of the designer, are not relevant. Expert evidence is admissible in an appropriate case to educate the court as to the relevant design field, but it is doubtful whether expert evidence is admissible to interpret the images in a registered design.

The leading case on the requirement the design be for a single product concerned a design for beverage cans. The design was represented as follows

A group of articles may be ‘a product’ within the meaning of the legislation if they are linked by aesthetic and functional complementarity and are usually marketed as a unitary product. In this decision the contested design did not satisfy the conditions set out above and could not be perceived as a unitary object. When groups of beverage cans are offered, they always include cans of the same size, which is understandable in the light of transport and storage.

In addition, the drawings in the registration depicting the design of a single product, must be consistent with each other. A registration must enable that design, to be clearly identified. It is necessary to examine whether the drawings constituting the representation as a whole, show the appearance of a single or unitary product, that is whether there is unicity of design. Inconsistencies or contradictions between the views may lead to the conclusion that the drawings shows different products, and more than one design.

On the facts the Court was satisfied that the Judge erred and each of the registered designs showed the design of a single modular product, and they were not invalid on this ground. While the components were shown in more than one colour, or not shown in some images, this did not mean the designs illustrated alternative embodiments. 

The judge’s reasoning concerning a lack of clarity was based on his finding it was not reasonably clear that they were each for a single product and was now not applicable.

Comment

It is important that when filing an industrial design, the drawings or other depictions clearly show the design as they determine protection related to the registration. For modular designs this can be a daunting task.

While there is uncertainty under the U.K. legislation concerning the grounds for attacking the validity of a design the right to do under the Canadian Industrial Design Act is open ended.

If you have questions, please contact me at mckeown@gsnh.com 

John McKeown

Goldman Sloan Nash & Haber LLP

480 University Avenue, Suite 1700 

Toronto, Ontario MSG 1V2

Direct Line: (416) 597-3371

Fax: (416) 597-3370

These comments are of a general nature and not intended to provide legal advice as individual situations will differ and should be discussed with a lawyer.

A version of this article originally appeared in the Law360 Canada published by LexisNexis Canada Inc.

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