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||Neutral Citation Number:  EWCA Civ 1285
IN THE SUPREME COURT OF JUDICATURE
IN THE COURT OF APPEAL (CIVIL DIVISION)
ON APPEAL FROM THE PATENTS COUNTY COURT
(HIS HONOUR JUDGE FYSH QC)
||Royal Courts of Justice
||28th July 2006
B e f o r e :
LORD JUSTICE MAY
LORD JUSTICE NEUBERGER
LORD JUSTICE WILSON
||LANDOR & HAWA INTERNATIONAL LTD
||- v -
||AZURE DESIGNS LTD
(DAR Transcript of
Smith Bernal Wordwave Limited
190 Fleet Street, London EC4A 2AG
Tel No: 020 7404 1400 Fax No: 020 7831 8838
Official Shorthand Writers to the Court)
MR A WILSON QC & MR M EDENBOROUGH (instructed by Messrs Royds) appeared on behalf of the Appellant.
MR D ALEXANDER QC & MR D WILKINSON (instructed by Messrs Bristows) appeared on behalf of the Respondent.
HTML VERSION OF JUDGMENT
Crown Copyright ©
- LORD JUSTICE NEUBERGER: This appeal arises out of a dispute about the design of a type of suitcase having an "expander" section. Luggage manufacturers have for some time built into many suitcases a captive top panel (the "top" in this connection being assessed on the basis that the suitcase is ready for opening rather than for carrying). This panel, by means of a peripheral zip, can be released so as to render the suitcase more capacious by limited upward expansion.
- The respondent claimant, Landor & Hawa International Ltd ("Landor"), is, and has been since 1985, engaged in designing, importing and selling travel suitcases and bags. Its managing director is Mr Sedat Selvi; in June 2002 he designed an expander section ("the Expander Design") to a rigid or "shell" suitcase, which was recorded by an employee of Landor on a computer in June 2002. Suitcases incorporating the Expander Design have been successfully marketed and sold, at the instigation or with the consent of Landor, in this country and abroad since June 2002.
- During the late summer of 2003, Landor became aware of the marketing and sale in the UK of expander suitcases made in China, under the brand name "Label", which, at least on Landor's case, infringed its design rights in the Expander Design. It discovered that the appellant defendant, Azure Designs Ltd ("Azure"), had imported marketed and sold such suitcases. In November 2003, Landor sent a letter to Azure warning it of Landor's intention to enforce such intellectual property rights as it possessed in suitcases with expander sections.
- There then ensued discussion and correspondence, to which it is unnecessary to refer, at any rate at this stage. In due course these proceedings were issued in October 2004. In its statement of case, Landor claimed rights in the Expander Design, which was described as a design "comprising the particular arrangement of piping and zippers depicted in the design document as Appendix 1". Appendix 1 was in this form:
Landor's statement of case went on to seek various heads of relief against Azure, including damages and an injunction, on the basis that, by importing marketing and selling the Label suitcase, Azure was or would be infringing Landor's design rights in the Expander Design. In particular, Landor contended that it had UK unregistered design rights ("UKUDR") and/or Community unregistered design rights ("EUUDR") in the Expander Design, which Azure had infringed and/or threatened to infringe.
- The proceedings came before His Honour Judge Fysh QC in the Patents County Court in October 2005. All the disputes arising between the parties, save for quantification of damages, were the subject of evidence and argument. The following month, the Judge handed down a judgment (to whose clarity comprehensiveness and succinctness I would like to pay tribute) in which he effectively determined all the issues in favour of Landor.
- The Judge gave Azure permission to appeal against his decision, and three main issues have been argued before us. The first is whether Landor enjoys UKUDR protection in respect of the Expander Design, it being conceded (subject to a "squeeze" argument) that, if it does, the Label product would infringe. The principle issue at stake in this connection is whether UKUDR protection is excluded because the Expander Design constitutes "a method or principle of construction". The EUUDR issue involves a rather similar dispute, namely whether the design rights being claimed by Landor are "in features of appearance of a product which are solely dictated by its technical function."
- The third issue is rather different. It is whether the Judge was right to grant a quia timet injunction restraining Azure from marketing and selling products which infringed Landor's design rights, despite the fact that any threat to do so had been withdrawn by Azure by the time Landor's proceedings were issued. I shall deal with these three issues in turn.
The claim for UKUDR
- The first issue centres round Azure's contention that Landor's claim for UKUDR in the Expander Design is precluded by s.213(3)(a) of the Copyright, Designs and Patents Act 1988 ("CDPA 1998") which provides as follows:
"(3) Design right does not subsist in--
(a) a method or principle of construction…."
- This contention has given rise to two main arguments, one of principle and one essentially of fact. The argument of principle concerns the meaning and effect of s 213(3)(a) of CDPA 1998 ("s 213(3)(a)"). The Judge held that the provision should be relatively narrowly construed, and that it did not apply merely because a design serves a functional purpose: it would not apply unless it can be shown that that purpose cannot be achieved by any other means. Although this formulation was challenged by Azure at least in its initial skeleton argument, it was not by any means the main focus of the well-sustained submissions of Mr Alastair Wilson QC (who appears with Mr Michael Edenborough) on behalf of Azure.
- In my opinion, the Judge's interpretation of s 213(3)(a) is correct. First, the section does not, as a matter of ordinary language, preclude a design being protected merely because it has a functional purpose. The language is perhaps a little opaque, but the words "method or principle" are important, and serve, in my view, to emphasise that mere functionality is quite insufficient to exclude a design from protection. Tempting though it may be to seek to redefine or expand on those words, I think it would normally be unhelpful in practice, and arguably wrong in principle, to do so, save to explain in a particular case why they do or do not apply.
- Secondly, as Mr Daniel Alexander QC, who appears with Mr David Wilkinson for Landor, says, it would be wrong in principle to conclude that a design incapable of protection merely because it serves a functional purpose. There is no simply no justification in policy or principle for such a conclusion. It would mean that a design which had only aesthetic features would be favoured over one with both aesthetic and functional features, a curious consequence of legislation one of whose main functions is to reward imagination and inventiveness.
- As Park J rightly observed in A Fulton Co Ltd –v- Grant Barnett Ltd  RPC 257, at para 70:
"The fact that a special method or principle of construction may have been used in order to create an article with a particular shape or configuration does not mean that there is no design right in the shape or configuration. The law of design right will not prevent competitors using that method or principle of construction to create competing designs….as long as the competing designs do not have the same shape or configuration as the design right owner's design has."
- Thirdly, the textbooks support this approach to interpretation. The Judge quoted a passage from Russell-Clarke on Copyright in Industrial Designs (seventh edition), at para 3-80, which analyses the effect of s 213(3)(a) in these terms:
"A method or principle of construction is a process or operation by which a shape is produced, as opposed to the shape itself. To say that a shape is to be denied registration because it amounts to a method or principle of construction is meaningless. The real meaning is this: that no design shall be construed so widely as to give to its proprietor a monopoly in a method or principle of construction. What he gets is a monopoly for one particular individual and specific appearance. If it is possible to get several different appearances, which all embody the general features which he claims, then those features are too general and amount to a method or principle instruction. In other words, any conception which is so general as to allow several different specific appearances as being made within it, it is too broad and will be invalid."
- The Judge agreed with that analysis, and so do I. It is a view which is supported by the editors of Copinger and Skone-James on The Law of Copyright (15th edition). At para 13-55, they state that the purpose of the section is "to ensure that designers cannot create an effective monopoly over articles made in a particular way". Jacob J appears to have taken the same view in paras 14 and 15 in Isaac Oren –v- Red Box Toy Factory  FSR 785. Having decided that "it is possible to make a device visually very different from Mr Oren's designs but which works the same way", he went on to hold that "[i]t follows that there is no principle monopolised here – only a visual embodiment of a device constructed in accordance with a principle"..
- On this basis, Mr Wilson's second and main argument for attacking the finding that the Expander Design enjoyed UKUDR was that, even on his interpretation of s 213(3)(a), the Judge ought to have found that the design fell foul of it, on the facts. Before turning to that submission, it is right to add that the Judge uncontroversially also reached certain other conclusions of principle. First, at least in relation to UKUDR cases, "infringement must be addressed through the eyes of a person to whom the design is directed: see C&H Engineering Limited –v- Klucznik  FSR 421 at 428". In this case, he held the notional addressee was a luggage manufacturer. The Judge also held that the "legend on the drawing is there to be read by the addressee; it clearly forms part of the drawing… see Temple Instruments Limited –v- Hollis Heals Limited  RPC 15".
- Mr Wilson's submission, at any rate initially in its written form, was framed in these terms, namely that, on the evidence, the Judge ought to have concluded that the design claimed, as shown in Appendix 1, was essentially functional in nature on the basis that "each individual ingredient of the design…is there to perform a functional purpose". Even if that was the case, it seems to me that this formulation could only succeed in principle if s 213(3)(a) had a wider meaning than that correctly adopted by the Judge. As I have said, there is no principle that a design is precluded from protection merely because it has a functional purpose, and that point does not cease to apply where the design is, or might be described as, "essentially" or "primarily" functional, or because every component of the design has a functional purpose.
- In the light of that, Mr Wilson realistically did not shirk from putting his case on the basis that the Expander Design was the only way of achieving the functional purpose of the design (and, if it was not, the Label product did not infringe – hence the squeeze to which I referred earlier). I would accept that, if this proposition was indeed established by the evidence, the claim might well fall foul of s 213(3)(a). However, it is a proposition which is difficult to establish, as Lord Reid recognised in Amp Incorporated –v- Utilux Products Ltd  RPC 103 at 109, where he said that "[I]t is difficult to imagine any actual case where one shape and one shape alone will work". It is, to be fair, a little easier to imagine in a case such as the present, where the design is less specific and the claim rather broader than that which Lord Reid was discussing.
- The trouble with Mr Wilson's argument is that it is not supported by the Judge's assessment of the evidence, and it does not appear to me that it is by any means clearly supported by a fair reading of the testimony of Azure's own witnesses. The witness who the Judge found to be "a perfectly reliable witness in all respects" (although he described others as "good [although] not a suitcase designer" and "satisfactory but not of great assistance") was Mr Selvi. He had been designing suitcases for some thirty years, and, in addition to his work as managing director of Landor, he described designing suitcases as "something of a hobby for me".
- Mr Selvi was firmly of the opinion (in his witness statement and in cross-examination) that the central piping had no functional purpose and was included "for purely cosmetic reasons, as far as I know". Mr Wilson suggests that the last five words not merely qualify, but weaken the force of, what precedes them. I cannot agree. First, as a matter of logic, any statement, perhaps especially of opinion, is made as far as the speaker knows. Secondly and in any event, Mr Selvi gave the same evidence both in his statement and in cross-examination without such a qualification.
- The Judge found that the witnesses (including some of those called by Azure) agreed that "there were in truth a number of other [than that shown in Appendix 1] ways of using piping and zipper combinations which could be used in practical expander suitcases". He gave specific examples, including "No central strip of piping between the zippers" and "No big piping on the outer edges of the zippers". He also said that "the design in issue can be easily avoided by using available resources all of which would achieve the same practical result with a slightly different appearance".
- The Judge further observed that "the words 'big piping' and 'normal piping' are used in the drawings as being a necessary part of the design" and that, on the basis of the evidence, those expressions "were terms well understood by luggage manufacturers… at the relevant time", and he concluded that "that alone suffices to dispose of the objection". This was on the basis that "a different and inconsistent quality [i.e. piping that was not, in the first case, 'big' or in the second case 'normal'] in relation to the same feature must take the design out of the objection."
- These findings are challenged on the basis that they are inconsistent with the evidence. It is true that there was some evidence from other witnesses which suggested that the central piping did perform a practical function. However, despite the forceful contention to the contrary from Mr Wilson, that evidence was not, in my view at any rate, so plainly right, because, for instance, of its source or of its logical basis, that we can or should hold that the Judge was disentitled from reaching the conclusion that he did.
- Indeed, while there was evidence from some of Azure's witnesses that at least some of the features of the Expander Design were the only way of achieving the functionality that they had, Mr Alexander's brisk and effective analysis of passages in the evidence of Azure's witnesses, in particular Mr Tsang, Azure's luggage manufacturer (and therefore a notional addressee of the design document), has satisfied me that there Judge was entitled to reach the conclusion that he did. In summary, that is because there was a substantial amount of evidence to support the conclusion of the Judge that the functional benefits of the Expander Design could be achieved by systems which did not fall within the ambit of Appendix 1, and because that design would not have been understood by the notional addressee as being capable of variation within wide limits.
- Mr Selvi not only gave the evidence I have referred to, but gave examples of alternatives designs which, in his view, would work as well. Although he also gave evidence which was helpful to Azure, Mr Tsang accepted that suitcases were sold with different designs (in particular no central piping or no big piping on the outer edge) to achieve what the Expander Design achieves, although he suggested that they might not have all the functional features of the Expander Design. So did Mr Parry, Azure's chairman. It is fair to say that they suggested that, the precise piping features of the Expander Design were particularly effective functionally, but it seems to me that that would probably not have been enough to bring the claim within s 213(3)(a), even if the Judge had effectively not rejected that aspect of the evidence given that it differed from that of Mr Selvi. Also Mr Grout, again called by Azure, clearly stated that the central piping was included for aesthetic reasons, although he later suggested that it had a practical function also.
- In these circumstances, it is unnecessary to determine the precise extent of the ambit of s 213(3)(a), and, in particular, whether Landor could be precluded from claiming UKUDR in respect of the Expander Design if it was the best way of achieving the technical functionality of a suitcase expander section. However, it is right to say that, as at present advised, essentially for the same reasons as those which justify the Judge's construction of s 213(3)(a), I do not consider that this would have precluded Landor from succeeding. Mr Wilson argued that this would thereby risk conferring patent-type protection through the back-door, but there are many differences between the design right and patent regimes, most relevantly the period of protection and the fact that design right is only infringed by actual copying.
- The Judge was criticised in Azure's skeleton argument for treating the exclusion in s.213(3)(a) of CDPA 1988 simply as a "squeeze argument that reduced the breadth of the claimed right". I do not accept that as a helpful or valid criticism. First, it seems to me, as a matter of principle, it is open to a Judge to rely upon the "squeeze" argument, provided he exercises great caution in doing so, as the interaction between the exclusion issue and the issue of infringement can be instructive, as Jacob J appears to have considered in the Isaac Oren case at paragraphs 13 to 15. Quite apart from this, it seems to me that, even if the Judge had not taken into account the squeeze argument, his application of the law, as he understood it, to the facts, as he found them, would inevitably have led to the same conclusion that he reached in any event..
- Azure's contention that "different manifestations" of the Expander Design would, on Landor's case, fall within the scope of protection, and consequently the Design must be excluded from protection, cannot be right. I have already referred to the Judge's finding as to how Appendix 1 would be interpreted by the notional addressee. Further, s.226(2) of CDPA 1988 defines "making articles to the design" as "copying the design so as to produce articles exactly or substantially to that design" (emphasis added). Accordingly, the possibility of variants infringing applies to unregistered design, and is inconsistent with Azure's contention.
- Finally on this issue, it is right to mention that the Expander Design was not, according to Azure's skeleton argument, clearly defined in Landor's statement of case. The nature of the point does not appear entirely clear to me. I have already quoted the contention in the particulars of claim that Landor was "the owner of unregistered design right in an arrangement of piping and zippers contained in the expanding section of the suitcase as recorded in a design document" which is Appendix 1. The particulars also stated that the design comprises "the particular arrangement of piping and zippers depicted in the design document". Like the Judge, I do not think there is anything in Azure's pleading point.
- I would therefore uphold the Judge's decision to the effect that Landor is entitled to UKUDR in respect of the Expander Design.
The claim for EUUDR
- The second issue raised on this appeal is whether the Judge was right to conclude that Landor was entitled to claim EUUDR in respect of the design shown in Appendix 1. In this connection, Article 8.1 ("Article 8.1") of Council Regulation (EC) No 6/2002 ("the Designs Regulation") provides that:
"A Community design shall not subsist in features of appearance of a product which are solely dictated by its technical function…"
- This reflects recital (10) of the Designs Regulation which includes this:
"Technological innovation should not be hampered by granting design protection to features dictated solely by a technical function. It is understood that this does not entail that a design must have an aesthetic quality…."
- The Judge held that Article 8.1 did not present an impediment to Landor's EUUDR claim. He said this in paragraph 42 of his judgment:
"The question is therefore: is the appearance of Landor's design solely dictated (i.e. driven without option) by the technical function? In my view, the answer is "no". I say this because of the spatial position of the constituent elements (big piping/zip/normal piping/zip/big piping) and by the presence of the piping elements themselves which introduce and essentially non-functional and even capricious element to the final appearance of the ensemble."
- Azure's attack on this conclusion of the Judge has two aspects. The first aspect is that the Judge was wrong to construe the terms of Article 8.1 as narrowly as he did, namely as indicated in the first sentence of paragraph 42, just quoted. In this connection, Azure placed reliance on Koninklijke Phillips Electronics NV v Remington Consumer Products Ltd  RPC 2, where the ECJ said this about the provisions of Council Directive 89/104 ("the Trademark Directive"):
"78 The rationale of the grounds for refusal of registration laid down in Art.3(1)(e) of the Directive is to prevent trade mark protection from granting its proprietor a monopoly on technical solutions or functional characteristics of a product which a user is likely to seek in the products of competitors. Art.3(1)(e) is thus intended to prevent the protection conferred by the trade mark right from being extended, beyond signs which serve to distinguish a product or service from those offered by competitors, so as to form an obstacle preventing competitors from freely offering for sale products incorporating such technical solutions or functional characteristics in competition with the proprietor of the trade mark.
79 As regards, in particular, signs consisting exclusively of the shape of the product necessary to obtain a technical result, listed in Art.3(1)(e), second indent, of the Directive, that provision is intended to preclude the registration of shapes whose essential characteristics perform a technical function, with the result that the exclusivity inherent in the trade mark right would limit the possibility of competitors supplying a product incorporating such a function or at least limit their freedom of choice in regard to the technical solution they wish to adopt in order to incorporate such a function in their product."
- Azure also relied on the way in which s.1(3) of the Registered Designs Act 1949 had been interpreted. That provision excluded from registration "features of shape or configuration which are dictated solely by the function which the article to be made in that shape or configuration has to perform". In the Amp Inc case  RPC 103 at 124, Lord Pearson held that the words in that section "dictated solely by function" meant "attributable to or caused or prompted by function". Earlier and to the same effect, at 115, Lord Morris of Borth-y-Gest suggested that if more than one shape could perform the same function, then it seemed to him that all such shapes would be excluded from protection.
- In my judgment, the Judge was right to hold that decisions on the Trademark Directive cannot be safely relied on in a case involving the Designs Directive. Article 3.1(e)(ii) of the Trademark Directive refers to "signs that consist exclusively of… the shape of goods which is necessary to obtain a technical result". It will be seen at once that the wording is not by any means identical to that of article 8.1.
- Indeed, as pointed by the Judge, the opinion of Advocate General Colomer in the Phillips case (reported at  RPC 38) contains in paragraph 34, an instructive comparison between the two provisions:
"The wording used in the Designs Directive for expressing that ground for refusal does not entirely coincide with that used in the Trade Marks Directive. That discrepancy is not capricious. Whereas the former refuses to recognise external features "which are solely dictated by its technical function", the latter excludes from its protection "signs which consist exclusively of the shape of goods which is necessary to obtain a technical result". In other words, the level of "functionality" must be greater in order to be able to assess the ground for refusal in the context of designs; the feature concerned must not only be necessary but essential in order to achieve a particular technical result: form follows function. This means that a functional design may, none the less, be eligible for protection if it can be shown that the same technical function could be achieved by another different form."
- Nothing in the reasoning of the ECJ in its subsequent decision, which agreed with the ultimate conclusions reached by the Advocate-General, in that case calls into question those observations. Further, as Mr Alexander says, there are real differences between the nature and purpose of trademark protection and design right. Trademarks are badges of origin, and the purpose of (and therefore the regime for) protecting the owner is different from the purpose for protecting designs, which have nothing to do with demonstrating origin.
- The Judge's conclusion as to the ambit of Article 8.1 is consistent with the views expressed by the editors of Copinger & Skone James (op cit) at paragraph 13 – 208. It is true that it is there said that it is not clear whether the exclusion in Article 8.1 "will only apply to a design that is the only design by which the product in question could perform its function or whether it operates whenever a design was as a matter of fact dictated solely by the function of the product even though it was not the only design that was capable of allowing that function to be performed". However, the editors go on to "submit… that the former (narrower) construction of Article 8.1 is the correct one". They draw support, rightly in my view, from recital (10) of the Designs Directive, which, they suggest, show that "the technical function exclusion was intended to be construed narrowly and that it should be construed in a way that does not unduly restrict the availability of protection for non-aesthetic (i.e. functional) designs".
- As the Judge observed, it would have been "tempting but dangerous" to rely upon the decision of the House of Lords in the Amp Inc case. The wording of s.1(3) of the 1949 Act at the time that it fell to be construed by the House of Lords is a little different from that of Article 8.1, and statutory and case-law context in which the two provisions fall to be interpreted are self-evidently different. The importance of these factors to the decision in the Amp case are clear from the analysis in the speech of Lord Morris at 113-115. Quite apart from this, the 1949 Act was to be interpreted in accordance with English rules of construction, whereas the Design Directive is to be construed in the way that the ECJ would construe it.
- Azure nonetheless contends that the Judge should have rejected Landor's case for EUUDR on the facts, namely on the basis that the Expander Design was purely functional. Apart from the fact that this is (either precisely or nearly) same argument on the facts as failed in relation to Landor's UKUDR claim, it is inconsistent with what the Judge's findings in paragraph 42, quoted above. In that paragraph, which was directed to the EUUDR claim, the Judge found that it was design with non-functional (and as the Judge put it "capricious") aspects.
- It seems to me that this clearly disposes of the argument that the "features of appearance" of the Expander Design in this case were "dictated solely by its technical function". Even if "solely" is not given the limiting meaning which the Judge held, then, as I see it, the inclusion of the word in Article 8.1 nonetheless would render it difficult for Azure to contend that the design in the present case is caught by the Article, because the design has been found by the Judge, in circumstances where this was open to him, to be in part "capricious".
- Another way of putting this part of Azure's attack on the judgment in this connection was that the features of the Expander Design defined in Appendix 1 were at such a level of generality as to be dictated solely by the technical function of the Expander Design. The Judge rejected that for the reasons given in paragraph 42, which I have quoted above. To my mind, those findings, which are really the same as the findings relating to the second point raised on the UKUDR claim, cannot be challenged, in the light of the evidence, as discussed in the previous section of this judgment.
- Accordingly, the appeal against the finding that Landor enjoyed EUUDR in respect of the Expander Design must fail.
The grant of the quia timet injunction
- Having decided that the Judge was right, or at the very least entitled, to conclude that Landor enjoyed UKUDR and EUUDR in respect of the Expander Design, as identified in Appendix 1, it is necessary to consider the remaining issue raised on this appeal, namely whether the Judge was right to grant an injunction against Azure.
- The facts relevant to this issue are as follows. Following the letter of November 2003, there was correspondence between the parties' respective solicitors which led to Azure being fixed with knowledge of the facts giving rise to Landor's design rights by early September 2004. Landor began these proceedings some 5 weeks later on 11 October 2004, by which date the Judge considered that there had been "ample time within which Azure and its advisers could come to an informed view about the proper course of action". However, as the Judge also recorded, by that time, Azure had "put a hold on all orders" and had advised Landor that it had decided to refrain from selling the Label suitcase. Indeed, this was put beyond doubt on 2 September 2004 by Azure giving a contractual undertaking, not to import, exhibit or offer to sell label expander suitcases ("the undertaking").
- If the facts had stopped there it would, in my opinion, have been wrong for the Judge to have granted the injunction that he did. It seems to me plainly inappropriate in principle to grant an injunction in favour of a claimant against a defendant who clearly and unequivocally agreed, before the action for the injunction was even started, to refrain from taking that very action which the injunction would have forbidden him from taking.
- However, there were, in the Judge's view, two additional facts which justified his decision to grant the injunction. The first fact, which I think would have been insufficient to justify the injunction on its own, was that, both before the issue of these proceedings and during the currency of these proceedings, Azure had clearly challenged Landor's claims for UKUDR and EUUDR and indeed had maintained their "threats counterclaim". Much more importantly, in my view, in January 2005, three months after the action has begun, and nine months before the case was heard by Judge Fysh QC, the undertaking was withdrawn in terms which made it clear that Azure was indeed threatening to infringe Landor's design rights. The letter stated that Azure commercially had "no option than to commence trading" in the Label suitcases again.
- Accordingly, subject, at least, to one point, the whole basis for contending that the injunction proceedings were unjustified, namely the undertaking, had fallen away long before the question of whether or not to grant the injunction came before the Court. In those circumstances, it seems to me that, again to put it at its lowest, the judge was entitled to grant the injunction that he did.
- The one outstanding point raised by Azure is a rather arid one, namely that the undertaking was in force, and there was therefore no threat of infringement, at the date of the issue of the proceedings, and therefore there was no tort or threatened tort upon which proceedings could properly have been issued. It was therefore, it is said, not open to the Judge to grant an injunction in October or November 2005, because that injunction effectively related back to a claim for the injunction which was not justified at the time it was issued.
- In my view, that argument is without merit. The courts have tended to take a pragmatic case-by-case approach, rather than a technical view, on the issue of whether it was appropriate for a claimant to have sought an injunction to restrain the infringement of an intellectual property right. In this connection, dicta from this court in Hooper –v- Rogers  Ch 43 at 50, LA Gear Inc –v- Hi-Tec Sports plc  FSR 121 at 139, and Linpac Mouldings Ltd –v- Eagleton Direct Export Ltd  FSR 545 at 550 and 551, certainly do not suggest a rule of practice or principle to support Azure's argument. On the contrary.
- At worst, Landor took a chance when issuing the proceedings, in that, if the undertaking had not been withdrawn in January 2005 it may well have transpired that, when the case had come to court in October 2005, the claim for an injunction would have been refused with an appropriate order for costs. In the event, however, the risk paid off, and it transpired that Landor's claim for an injunction was justified, because the undertaking was withdrawn some three months after the proceedings were issued, and it was never reinstated.
- If anything, this seems to me rather to understate Landor's case. In my judgment, the Judge was right to take the view that it was reasonable for Landor to have sought an injunction when it issued proceedings, notwithstanding the existence at that time of the undertaking, because of the combination of Azure's denial of Landor's design rights and the maintaining of Azure's threats counterclaim. As I have said, that counterclaim was based on the proposition that Landor enjoyed no Design Rights in the Expander Design. However, that is certainly not intended to mean that, if the undertaking had not been withdrawn, an injunction could properly have been granted or that Landor would not have been at the receiving end of an adverse costs order.
- Quite apart from the legal merits of the argument on this point, it seems to me that Azure's argument results in a conclusion which is scarcely consistent with the overriding objective. It has to be accepted that, once the undertaking was withdrawn in January 2005, Landor's claim for an injunction was plainly justified. Accordingly, Azure's contention amounts to saying that the injunction was properly granted, but that it could only have been sought by an amendment made to the claim after the withdrawal of the undertaking, or, pursuant to fresh proceedings brought after that date. That would have involved extra costs and effort for the same result as that which was achieved by Landor seeking an injunction from the inception of the proceedings.
- I would accordingly uphold the decision of the Judge on this final issue as well.
- In these circumstances, I consider that the Judge reached the right conclusions for the right reasons on all the three issues raised by Azure, and I would therefore dismiss this appeal.
- LORD JUSTICE WILSON: I agree.
- LORD JUSTICE MAY: I agree that the appeal should be dismissed for the reasons which Lord Justice Neuberger has given. I gratefully adopt his account of the facts and circumstances of the case.
- The design right asserted in these proceedings is for the expanding part of an expandable rigid suitcase. The design is in the drawing. This shows the rigid suitcase, a zip to open it, a closely parallel zip to effect the expansion, two wide PVC strips of piping on either side of the zips and an ordinary, narrower PVC strip of piping between the two zips. The evidence was that in suitcases this narrower PVC strip is always, or normally, strengthened with an internal steel rod of small diameter.
- The judge accepted the evidence of Mr Selvi that the functional design for the expanding part of the suitcase could have been achieved in various other ways. Mr Selvi produced manufactured examples of a number of these, which we have seen. The appellant's witnesses agreed that these examples worked but their view was that they were of inferior quality. Mr Selvi said, and the judge in substance accepted, that neither the wide strips nor the narrow strips were functionally necessary. They were there in his design as a matter of appearance.
- Witnesses called by the defendant had disagreed. They said that the wide strips were there to protect the stitching and the better to effect the join between the body of the case and the zips, and that the narrow reinforcing strip was there to provide rigidity to enable the zips more easily to be used when the suitcase was bulging full. The judge may have accepted that suitcases with the strips were functionally superior to suitcases without the strips. Mr Wilson submits that this evidence was cogent and showed that the functions performed by the strips could not be performed by other means. The judge did not so find, in part because he did not address functionality at that level of detail.
- In my judgment, the judge was entitled to find on the evidence that these strips were not functionally necessary; see Mr Selvi's evidence in his witness statement and supplemental witness statement and his quite clear cross-examination on pages 54 to 56 of the transcript.
- That by itself is sufficient to dispose of the main point in this appeal, but even if that were wrong Mr Wilson's submissions that the strips were functionally desirable and that if the function they performed was required, it could not be performed by other means, does not in my view measure up to the requirement of article 8.1 of Council Regulation EC Number 6/2002, because they were not on evidence accepted by the judge solely dictated by their technical function.
- As to the exception in section 213(3)(a) of the Copyright Designs and Patents Act 1988, the strips were not on any view of the evidence "a method of principle of construction" within that provision as properly understood. It was, as the judge found on the evidence, quite possible to make a rigid suitcase with an expanding section visually different from a suitcase using this design and which worked in the same way. The functions relied on by Mr Wilson were at best no more than variations of quality. It followed, as Jacob J said in Isaac Oren v Red Box Toy Factory  FSR 785, that there was no principle monopolised, only a visual embodiment of a device constructed in accordance with a principle.
- As to the questions of injunction and threats, I agree with what Neuberger LJ has said and have nothing to add.
- For these reasons I, too, would dismiss this appeal.
Order: Appeal dismissed.
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