BACKGROUND

This dispute relates to bait bags used in coarse fishing. Such bags are made of mesh which is woven from PVA. There are 2 basic types of knitting method:-

• Warp knitting, in which a number of separate yarns are employed (the number being equal to the number of stitches in a row) and in which the yarn zig-zags vertically following adjacent columns of knitting, rather than a single row. Warp knitted products are known to be ladder-resistant.
• Weft knitting, which is "normal" knitting employing a single yarn which follows a single row. Weft knitted products are not ladder-resistant.

Elite commissioned a design for a particularly ladder-resistant micromesh in June 2003. The design resulting from this commission employed a "3 needle closed-open-closed Atlas" stitch. Elite claim that this design was copied by RAGS, and thus brought an action for infringement of both UKUDR and CUDR. In defence, RAGS claim that their product was independently designed for them by their supplier in China, i.e. that there was no copying, and in any event their product was not made "exactly or substantially" to the design of the Elite mesh. Further, RAGS attacked the subsistence of UKUDR and CUDR in the Elite design.

UKUDR

RAGS claimed that the Elite design was not original and/or was commonplace (and was therefore excluded from UKUDR protection by virtue of s213(4) CDPA’88), and also that the design was merely a method or principle of construction (and was therefore excluded from protection by virtue of s213(3)(a) CDPA’88).

Fysh J found that the designer of the Elite mesh had exercised some degree of skill and judgement (although he commented that it was a rather small degree), and so the design of the Elite mesh was original for the purposes of UKUDR. Fysh J also found that the design was "certainly not commonplace".

However, Fysh J came to the conclusion that the basic appearance of the Elite mesh was generated by the use of a particular method of knitting (the "Atlas warp stitch method") and, although appearances may differ slightly from product to product, the design inevitably covered a method or principle of construction. Design right was therefore deemed not to subsist in the design of the Elite mesh. Accordingly, the UKUDR part of the action failed.

CUDR

CUDR lasts only 3 years from the date on which the design was first made available to the public within the Community (Art 11 Council Reg 6/2002). Elite first showed the mesh in dispute at a trade fair in August 2003. Accordingly, CUDR had expired by the time the case was decided, and so the claim to CUDR infringement was a "damages only" claim.

RAGS claimed that the Elite design lacked novelty and individual character (and was therefore excluded from CUDR protection by virtue of Art 5&6 Council Reg 6/2002), and also that the design comprised only features of appearance which are dictated solely by technical function (and was therefore excluded from protection by virtue of Art 8.1 Council Reg 6/2002).

Fysh J found that there was no evidence that a mesh had ever been made according the method used by Elite. There was some use of the method to create a closed fabric for ladies’ snoods - but an average angler as the "informed user" would not have the remotest interest in ladies’ snoods. Accordingly, the Elite design was found to be new, and was also found to possess individual character for the purposes of CUDR.

On the technical function question, Fysh J construed Art 8.1 narrowly - and as the Elite design was not the only design capable of achieving the function of containing finer types of particular bait until the bait bag disintegrated, the Elite design was not caught by Art 8.1.

There was therefore an infringement issue to be decided - infringement of Elite’s CUDR.

INFRINGEMENT

Fysh J found that the burden of proof had shifted to RAGS, in view of the marked similarity between the products.

The important points from the evidence heard on the development of the alleged infringing RAGS mesh were:-

• RAGS sourced all mesh production to China. The Chinese supplier was primarily a warp knitting company.
• There was another micromesh on the market in early-2003 (the "Margin mesh"). This mesh was weft knitted.
• RAGS asked their Chinese supplier to copy the Margin mesh, which it did using weft knitting. This mesh (unsurprisingly) laddered badly and was unacceptable to RAGS.
• The Chinese company then realised that RAGS did not need an exact copy - but a mesh with a similar appearance but which did not suffer from such serious laddering problems.
• The Chinese company subsequently employed a warp knitting technique, and created a mesh that was similar to the Margin mesh and was ladder-resistant.
• This mesh was acceptable to RAGS, and formed the alleged infringement.

Other important points relevant to the infringement issue were:-

• Both parties conceded that it takes 4 to 6 months to get a mesh from development into the UK market. The Elite mesh was first shown in August 2003, so one would not expect a copy to be offered to wholesalers until about January 2004. Evidence showed that the RAGS mesh was in fact being offered as early as September 2003.
• The Elite mesh was compared to other competitor’s similar products in a trade magazine ("Crafty Carper"), and did not by any means stand out as the best product in the range. Any argument relating to RAGS’ "motive to copy" was thus not convincing.

In view of the above, Fysh J found that RAGS had sufficiently established their case that their design was created independently. The CUDR infringement action therefore failed.

Dr. K Bartle