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You are here: BAILII >> Databases >> Intellectual Property Enterprise Court >> Raft Ltd v Freestyle of Newhaven Ltd & Ors [2016] EWHC 1711 (IPEC) (13 July 2016) URL: http://www.bailii.org/ew/cases/EWHC/IPEC/2016/1711.html Cite as: [2016] EWHC 1711 (IPEC) |
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CHANCERY DIVISION
INTELLECTUAL PROPERTY ENTERPRISE COURT
Strand, London, WC2A 2LL |
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B e f o r e :
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RAFT LIMITED |
Claimant |
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- and - |
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FREESTYLE OF NEWHAVEN LIMITED CHRISTOPHER ERIC HORSNELL HIGHLY SPRUNG LIMITED |
Defendants |
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Richard Roberts (instructed by Foskett Marr Gadsby & Head LLP) for the Defendants
Hearing dates: 24-25 May 2016
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Crown Copyright ©
Judge Hacon :
Introduction
Raft's design right claims
Subsistence of design right
The law
"A work need only be 'original' in the limited sense that the author originated it by his effort rather than slavishly copying it from the work produced by the efforts of another person."
Jacob LJ observed (at [77]):
"For, whilst it is trite that mere servile copying (for instance tracing or photocopying) does not amount to originality, there are clearly forms of 'copying' which do – the shorthand writer's copyright is a paradigm example which has stood since Walter v Lane [1900] AC 539."
Mance LJ agreed with both Mummery and Jacob LJJ. Thus, provided that a designer has expended some sort of effort or skill, such as by way of aesthetic judgment, above merely copying an earlier design in a manner that can be described as slavish or servile, his or her design is liable to satisfy the first requirement of originality.
The wide-arm Loft sofa
The skinny-arm Loft sofa
Infringement of the design right in the wide-arm Loft sofa
Joint tortfeasance
The law
"[66] I interpret this to mean that in order to fix an alleged tortfeasor with liability, it must be shown both that he actively co-operated to bring about the act of the primary tortfeasors and also that he intended that his co-operation would help to bring about that act (the act found to be tortious). Liability will always be subject to the threshold requirement that the alleged joint tortfeasor's contribution to the act was more than de minimis."
Passing Off
The law
"[285] As Floyd J (as he then was) stated in Numatic International Ltd v Qualtex UK Ltd [2010] EWHC 1237 (Ch); [2010] RPC 25 at [39]:
"It is recognised that it is more difficult to acquire a sufficient reputation and goodwill in the shape or get-up of a product. Whilst the principal function of a brand name is to denote origin, the shape and get up of a product are not normally chosen for such a purpose. A member of the public seeing a product which looks identical to another (a red cricket ball is an example) does not necessarily, or even normally, conclude that they come from the same source. The claimant must prove that the shape of its goods has come to denote a particular source to the relevant public: see Hodgkinson & Corby Ltd v Wards Mobility Ltd [1994] 1 W.L.R. 1564; [1995] F.S.R. 169 at 1573-4. In that case Jacob J asked whether:
'the plaintiffs have proved that the shape of their cushion is the "crucial point of reference" for those who want specifically a ROHO cushion … And have they proved that persons wishing to buy a Roho cushion are likely to be misled into buying a Flo'Tair.?'"
[286] It is worth citing a further passage from Hodgkinson & Corby Ltd v Wards [1995] F.S.R. 169 which follows on immediately from that cited by Floyd J:
"Before turning to the evidence I would make one general observation. It was the Reverend Wm. Paley who said in Natural Theology (1784), ch. i: 'The watch must have a maker.' In that sense every manufactured article conveys a representation — that it had a maker. Now where an article has a readily distinguishable appearance and there has only been one maker, once the article becomes well-known in the market, consumers when they see an article like that may assume that it is made by the same maker as he who made the articles of that individual appearance which they have seen before. So, in the instant case, almost all those who casually saw the Flo'Tair cushion (or just a picture of it) reacted by saying, 'That is a Roho.' One more precisely said, 'That is a Roho or a convincing copy.' This sort of evidence alone can seldom, if ever, satisfy the legal test for passing off. It does not prove that anyone relies upon the appearance to get the product of the maker they want."
[287] As can be seen from this passage, whether or not reliance is the acid test for the purposes of the acquisition of distinctive character by a shape trade mark in European law, it is certainly the acid test for the purposes of acquisition of goodwill in a shape for the purposes of English passing off law.
(1) Emails from customers.(a) The first email came from a customer, Mr Arnott, who did not suggest that he thought that Raft and Highly Sprung were the same retailer. He said that Highly Sprung "had an identical sofa to The Manhattan for considerably less …". Mr Arnott was apparently aware that Highly Sprung were offering him an identical equivalent, but this did not mean that it was a sofa from the same source.(b) The second email, from a Mr Rissen, was similar. He knew that Raft and Highly Sprung were separate stores. He had seen the Loft sofa in Raft's store and then saw what he took to be exactly the same model in Highly Sprung's window at a cheaper price. He bought from Highly Sprung and regretted it. Like Mr Arnott, Mr Rissen thought the two sofas were the same model of sofa, but he did not necessarily think that they came from the same source.(c) The third email, from Ms Cornock, said that her husband had mistakenly gone into the Highly Sprung store in Tottenham Court Road thinking it was the Raft store. There was no explanation why he made the mistake.(2) Mr Quinn's evidence
(a) A customer called Fiona Lewis told someone at Raft that Highly Sprung had informed her that they could supply the same product as Raft at a better price. Ms Lewis was apparently clear that Raft and Highly Sprung were rivals, not associates. The reference to an offer of "the same product" is again ambiguous. Like Mr Arnott and Mr Rissen, Ms Lewis may well have understood that Highly Sprung could offer an identical product, just as good, but at a cheaper price. On the evidence of this email I cannot draw any further inference.(b) There was no record from Highly Sprung's invoices of discounts being offered to a potential customer from another store. Mr St Quintin argued that the only explanation for this was that the principal factor in the customers' purchase decision was the sofa shape. I do not see that this is a correct inference and even if it were, it does not follow that there was a relevant misrepresentation by Highly Sprung.(3) Mr Black's evidence
Mr Black is the manager of the Highly Sprung Store in Tottenham Court Road.(a) Mr Black said that Highly Sprung's products were exactly the same as Raft's but cheaper. Assuming he said this to customers, it was not a representation that Highly Sprung's sofas came from the same source – just that they were the same and cheaper.(b) Mr Black said that someone from Raft put an 'A' board – a street board advertising and identifying the locality of the Raft store – on the pavement immediately outside Highly Sprung's door. According to Mr Black this was part of a programme of shouting and confrontational behaviour by Mr Quinn. He said that some customers did enter Highly Sprung's store thinking it was the Raft store, but probably only during the period when Raft's 'A' board was left outside Highly Sprung's door. This is not evidence of a misrepresentation caused by sofa shapes or names, or the store livery.
(4) Mr Lambert's evidence
Mr Lambert worked in Highly Sprung's store, reporting to Mr Black. He said that in his early days at the store there was a period when Raft kept putting an 'A' board right outside Highly Sprung's door and that this led to people walking in believing it was the Raft store. Mr Lambert said that the staff always politely said it was not and pointed them next door. This reinforces Mr Black's evidence about the 'A' board and does not suggest any misrepresentation.
(5) Draft statement of Shah Rahman
Mr Quinn exhibited a statement from Shah Rahman, the owner and director of another furniture business in Tottenham Court Road who used to work for Highly Sprung. Mr Rahman did not attend court. His statement was exhibited to that of Mr Quinn who explained that because the parties had been limited to the number of witnesses they could adduce at trial, Mr Rahman had not been included. Mr Quinn relied on Mr Rahman saying that while at Highly Sprung on at least 7 occasions customers had entered and asked: "Is this Raft?".
The Counterclaim
Ownership of the design right
"Further to our recent telephone conversation, as discussed I have retrieved the report and valuation from our archive and note that, at the time of my visit to the company, I noted that the director Chris Horsnell stated that the designs and drawings relating to the furniture manufactured by the company were designed and drawn by him over many years and it was concluded that these assets were owned by him personally, this should have been noted and included in our report and valuation (R&V) but was omitted by me for which I apologise."
Mr Thomson then quoted extracts from the R&V, including this:
"INTELLECTUAL PROPERTY
10.0 The company have their own website: www.freestyleoflondon.co.uk. The site is designed mainly to showcase their products and is unable to receive orders, therefore due to the minimal cost of designing and setting up a similar site we attribute no value to this asset in either type of sale."
Infringement
The alleged licence
"As discussed on Saturday the events of the past few months and the manner in which they have happened leave my position as a supplier to raft untenable and therefore I have had to make the very difficult decision to close your account. To minimise the disruption and allow you time to organise your own production I am prepared to accept orders up to 28th February 2013." (original underlining)
Conclusion