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Woodhouse UK Plc

v
Architectural lighting Systems
[2006] R.P.C. 1
Facts
 The claimant was the proprietor of Registered Design.
 The design was for a street light fixture. Lantern had been
commissioned by Claimant in late 1998/early 1999 from an
independent design company, Creactive Design Ltd
(“Creactive”). An employee of Creactive produced four
drawings for the Geo lantern, one of which was later used for
the purposes of design registration. Creactive's conditions of
contract stated that the copyright of any commissioned
design passed to its client on payment of all sums then due to
Creactive. Payment was made by the claimant in April 1999.
The application for registration was made in March 1999.
 The representation showed a lantern and bracket drawn in full
lines mounted on a pole drawn in pecked lines.
 The claimant had manufactured and sold a street light made
in accordance with the Registered Design under the name
“the Geo disc” or “the Geo lantern”.
 At the same time, another design company, Lifschutz
Davidson Ltd (“LDL”) also worked with the claimant to
produce a coherent range of items of street furniture. This
(with the Geo lantern) later became known as the Geo
range.
 It was agreed between the claimant and LDL that
applications for registration of the designs of the Geo range
would be made in the name of LDL and for this purpose the
claimant's patent agents were used. The designs (including
the Creactive Geo lantern design) were registered in the
name of LDL.
 The registration of the Registered Design in the name of LDL
was a mistake, although both the claimant and LDL were
aware that LDL had no proprietorial rights in the design.
 LDL assigned the Registered Design to the claimant on
October 16, 2002.
 The alleged infringements were the defendant's “Polo”
600 and 800 lanterns illustrated in a brochure and as
installed in Bradford and Winchester. The defendants'
“Polo” lantern had a slightly protuberant glass protector
and a “knuckle” or metallic joint on the circumference of
the lantern which served to provide a location for joining
the lantern to the bracket. Neither of these features was
present in the Registered Design.
 During the course of the trial, the defendants agreed to
submit to judgment, including an award of additional
statutory damages, in respect of infringement of
unregistered design right.
Claimants
design
Defendant's
design
Plaintiffs contention
 the requirement in s.1(2) of the Registered Designs Act
1949 (as amended by the Copyright, Designs and Patents
Act 1988 ) that an application for registration be made by
the person claiming to be the proprietor was satisfied if
the applicant made a bona fide claim to proprietorship.
 It also argued that the design had been created by
Creactive in pursuance of a commission from the
claimant so that at the time of the application for
registration the claimant was the equitable owner of both
the design and of the unregistered design right. It also
submitted that the assignment between LDL and the
claimant perfected the title before the action
commenced.
Defendant
 they contended that the Registered Design was invalid
because the application for registration had been made
in the name of a person who had no right or interest of
any kind in the design
 The defendants denied infringement of either the design
right or the Registered Design, asserting that the design of
the Polo lantern had been independently “conceived”
by Mr Bennett who then commissioned Urbis to prepare
the necessary drawings. There is also a counterclaim for
cancellation of the Registered Design—together with
associated declaratory relief.
Held
 the test of whether a party was properly claiming to be the proprietor
of a registered design was objective. Save for commissioned works,
the proprietor of a new design was the author of the design. On the
facts LDL had not qualified as the proprietor. The evidence
undermined claimant pleaded case of the propriety of the
application for the design. Whilst there was no bad faith in what was
done, there was hardly good faith either. No one had really
addressed their mind to the consequence of the deliberately
incorrect application by LDL of the registered design. There was an
unresolved issue as to the provenance of the only drawing that had
been said to give rise to the registered design, and whilst claimant
argued that provenance was not important since the drawings either
emanated from LDL or Creactive on commission, Creactive conditions
of contract accorded with the reality of the situation.
 Applying the terms of those conditions, the copyright
of the designs contained within the drawings had not
passed to claimant until payment had been
received. As claimant had not paid Creactive in full
at the time of the application of the registered design
by LDL, neither claimant nor LDL had any title to any
rights in the drawings in equity or law at that time. At
the date of application for registration of the design,
LDL not only had no justification to be named as its
proprietor, but knew that it had no justification. It
followed that the purported assignment between LDL
and claimant was an empty document devoid of
effect and the registered design was invalid and
therefore cancelled.
Thank You.

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