Action Storage Systems Ltd v G-Force Europe.Com Ltd & Anor
Decision date: 7 December 2016
Neutral citation: [2016] EWHC 3151 (IPEC)
Overall AI summary confidence: medium
Short overview
This short overview is intended to summarise the case, issues and outcome so far as they are supported by the judgment.
AI confidence in this short overview: medium
Action Storage sued FECL and G‑Force alleging their SuperTuff lockers copied Action Storage's eXtreme locker designs and that unregistered design right subsisted in the eXtreme lockers and parts. The court found the eXtreme design as a whole and several parts (notably exterior and most interior door features except moulded hinges) were original, that certain features (top/bottom stacking faces) were excluded as "must fit" interface features, and that the defendants had copied and made articles substantially to the protected designs, giving rise to primary and secondary infringement (with secondary liability established after 27 June 2014). Some pleaded features were rejected as non‑original or excluded.
Ratio decidendi
This summary is intended to identify the ratio decidendi, meaning the legal reasons for deciding and the binding part of the decision.
AI confidence in this ratio decidendi summary: medium
The judgment holds that pleaders should identify the significant features of a claimed design when relying on unregistered design right; when assessing subsistence and infringement exclude features falling within the statutory exclusions (methods/principles of construction and "must fit" interface features), but do not exclude from comparison features merely because they lack originality; proof of copying supports a finding that accused articles were made exactly or substantially to the protected design; and secondary liability can arise even where the defendant says it relied on legal advice if the facts show knowledge or reason to believe.
Obiter dicta
This summary is intended to identify obiter dicta, meaning observations made by the way that were not necessary to deciding the case and are not binding.
AI confidence in this obiter dicta summary: medium
The judgment includes commentary suggesting that the removal of the words "any aspect of" from s.213(2) of the Intellectual Property Act 2014 may be read as limiting claims to designs as embodied in articles and to discourage abstract claims, and offers practical guidance that parties should use clear labelled lists or charts of significant features to streamline subsistence and infringement disputes. These points are presented as practical observations rather than binding legal rulings.
Warning
The chunk contains extensive repetition and duplication of passages and citations which may make reading and extraction of discrete points more difficult; proceed with care. notes contain repetition and some duplication; they may be incomplete on detailed factual or procedural points.