Design rights infringement
Calculation of additional damages for design rights infringement 14 February 2014
Pendle Metalwares Ltd (T/A Thomas Barker & Son) v. (1) Walter Page (Safeway’s) Ltd (2) Empteezy Limited
Judgement: 14 February 2014
Before his Honour Judge Purle QC
This is the judgement on an inquiry as to damages for infringement of unregistered design rights (UK and Community), passing off and breach of copyright following a liability judgment of Mr. Stuart Isaac QC handed down on 31st July 2012.
The action itself related to cigarette bins for outdoor use. The issues included overlapping rights; infringement and subsistence; and extensive factual disputes. On liability the Judge found that the smoking bins had been copied from the claimants designs, imported and sold . The Judge rejected a defence by the defendants’ that one of their representatives had been a joint designer.
Here are a few interesting points raised in the Judgment.
The claimant relied on section 229(3) of the CDPA 1988 for its claim of additional damages. Under section 229(3) the court has power to award additional damages having regard to all circumstances of the case including flagrancy and accrued benefit. There are similar provisions relating to copyright infringement in the CDPA but 229(3) relates to design rights.
PurleJ did not draw a distinction between design rights and other infringements as he considered the principle to be the same.
If the judge is unable to draw inference of the number of infringing goods that were sold then instead of awarding lost profits on the order an award of a royalty rate would be more appropriate. This would produce a much lower level of damages.
PurleJ referred to Kitchin J, in Ultrafame UK Limited v. Eurocell Building Plastics Limited  EWHC 1344 (Pat) in assessing damages for patent infringement.
PurleJ awarded an uplift of approximately 25% of the compensatory award, £13,000, in additional damages.
Interest at the rate of 3% above base was awarded. The measure of interest is not the measure that the claimant has infact paid but what a reasonable borrower in the claimant’s position might pay.