- 21 Oct 2024
- •
- 3 min read
IP Horizons: October 2024
IP Horizons brings you the latest interesting and amusing cases in the world of a world of intellectual property and trade marks.
This month…
Cooking up controversy: AGA’s recent copyright battle
All IP cases are interesting, but this one has attracted my attention because years ago I acted on behalf of a company which refurbished AGAs and which had received an infringement notice from AGA in similar circumstances.
In AGA Rangemaster v UK Innovations ([2024] EWHC 1727 (IPEC)), AGA brought claims against a company which refurbished AGAs and replaced the AGA control panel with its own electrical control panel, subsequently reselling them into the market under the name eControl Cookers. These converted AGAs bore AGA trade marks and an electric control panel mimicking those found on the AGAs.
AGA’s claims related to trade mark infringement and copyright in a design drawing of an AGA control panel and which, AGA claimed, was infringed by the defendants’ own control panel.
Trade mark claims
With regard to the trade mark infringement claim, AGA owned trade marks for the word AGA, a logo, and 2D and 3D marks of a full cooker. There were two elements to the case:
- The judge held that the AGA trade marks had been infringed because the way the defendants marketed and sold the cookers gave the impression that there was a connection between eControl Cookers with AGA.
- In the second infringement claim, the judge held that use of AGA as a descriptive indicator of origin of the goods, was permissible under s11(2)(b) TMA 1994. This second claim mirrored my previous interactions with AGA and we also won on this point (it is not an infringement of a registered mark if you are merely referring to it as a designation of origin) the product IS an AGA, it cannot be referred to as anything else. But you cannot misrepresent an association or connection with AGA that is not otherwise there.
Copyright claim
With regard to the copyright claims, this was the interesting bit! Since Brexit, IP lawyers have been on tenterhooks over the question of copyright and design cross-over. The question is whether the English courts are prepared to diverge from the EU approach that has enabled many products traditionally protected by design rights to benefit from the much longer-lived copyright protection.
We all know that there is an interaction between copyright and design right and that the copyright in the underlying design drawings is not infringed by producing copies of the 3D article. That falls into design law territory and s.51 of the Copyright Designs and Patents Act 1988. For such articles, UK unregistered design right (which was also introduced under the 1988 Act) and/or unregistered Community design is the only potential protection available. That means that the vast majority of 3D articles will not be protected in copyright under UK law.
Therefore, for AGA to establish that their control panel (which was more function than aesthetic appeal) was protected by copyright, AGA claimed that copyright subsisted in the 2D CAD drawing showing the design of a control panel for electric AGA Cookers. AGA claimed this was an original artistic work under the Act.
The defendants denied copyright subsistence and infringement, arguing that the CAD drawing was entirely dictated by function and was not an expression of the artist’s own intellectual creation and claimed the s.51 defence.
The Judge rejected this argument. He referred to Brompton Bicycle and Cofemel – two CJEU authorities for the principle that copyright can subsist even if a shape of a product is, at least in part, necessary to obtain a technical result.
Applying this principle, the Judge appears, unhelpfully, to have gone about his decision starting at the back and ending at the front.
He held that although the design depicted in the CAD Drawing was influenced by function of the panel (operating the cooker), he did not consider that it was “dictated by that function” and that there were sufficient creative choices made by the original designer. Accordingly, he found that the defendants’ control panel was copied from the claimant’s control panel, thereby indirectly copying the CAD drawing. He then found that a substantial part had been taken: the features reproduced included those features that were the result of creative choices made by the original designer.
So having found that there was infringement, he then considered whether the CAD drawing was capable of subsisting as an artistic work. His decision was that the control panel itself could not be considered an “artistic work” and that the defendants were entitled to rely on the defence afforded under s.51 of the 1988 Act.
The decision has been granted permission to appeal to the Court of Appeal. That means we finally might have clarity in the UK on whether a work that is a 3D work, has to be an ‘artistic work’ in order for copyright to be enforced; in other words: does the Cofemel approach apply in the UK or not?
