J. Mac Safety Systems Limited v Q Deck Safety Systems Limited

J. Mac Safety Systems Limited v Q Deck Safety Systems Limited: Short summary

Defending UKUDR Claim for Safety Decking System

The Problem: Our client, Q Deck, a former customer of J. Mac's safety decking, faced a High Court UK Unregistered Design Right infringement claim after launching its own compatible "Q Deck" system. J. Mac alleged copying of its panel and pin designs.

Our Action & The Result: We admitted Q Deck used Macdeck as a starting point for interoperability but argued significant independent design effort led to products not "substantially similar" overall. We also challenged the duration of J. Mac's rights. The High Court found Q Deck had copied from Macdeck but agreed the overall Q Deck main panels were not substantially similar due to design differences (different apertures/patterns), thus no infringement of the main panel designs. Infringement was found for the panel's perimeter design only. The pin claim failed on a technicality regarding J. Mac's pleading after functional parts were excluded. We also won on establishing an earlier start date for J. Mac's design right term. Passing off was conceded separately.

J. Mac Safety Systems Limited v Q Deck Safety Systems Limited: In detail

Competition in manufacturing often involves disputes over design rights, especially when former commercial partners become rivals. Q Deck Safety Systems, previously a major customer (£1m purchases) of J. Mac Safety Systems' "Macdeck" construction safety decking, found itself facing High Court litigation after launching its own competing "Q Deck" system.

J. Mac alleged that Q Deck's new panels and connecting pins infringed UK Unregistered Design Right (UKUDR) subsisting in several aspects of the Macdeck design. They also brought claims for registered design infringement (later discontinued) and passing off. With the Q Deck system representing a significant new venture for our client, defeating the core design right allegations was critical.

Q Deck Safety Systems instructed Virtuoso Legal to mount a robust defence.

Our action and the result

While acknowledging that the Macdeck product was the starting point for Q Deck's design process (driven by a desire for interoperability with existing stock), our defence focused on two key pillars: challenging the subsistence of J. Mac's alleged rights in certain features, and arguing that the final Q Deck designs were not infringements.

We presented detailed evidence demonstrating that Q Deck undertook a significant independent design effort (£250k investment over 2 years) specifically aimed at creating a product that, while compatible, possessed a distinct overall design impression. We highlighted specific differences in apertures, surface patterns, and structural elements intended to improve functionality and visual identity.

The High Court (Patents Court, Shorter Trials Scheme) delivered a nuanced judgment:

1. Main Panel Designs (1x1m & 0.75x1m): No infringement. Despite evidence confirming Q Deck copied from the Macdeck system, the judge found the overall designs of the Q Deck panels were not made exactly or substantially to J. Mac's designs. Key differences (rounded vs. angular apertures, added structural/visual elements like the 'X' pattern) created a different overall impression for the informed user.

2. Panel Perimeter Design: Infringement found. The specific design features of the panel edges were deemed substantially similar.

3. Pin Design: No infringement (on a technicality). While the remaining non-functional parts of the Q Deck pin were found substantially similar to the Macdeck pin design, the claim failed because, after legally required exclusions (must-fit features), the remaining part of J. Mac's design didn't constitute the 'whole design' as pleaded.

4. Design Right Duration: We successfully argued the Macdeck system was first "made available for sale or hire" in 2016 (due to site demonstrations), not 2017 as J. Mac claimed. This earlier date shortened the effective period of J. Mac's enforceable design right.

5. Passing Off: This was conceded by Q Deck based on early use of similar branding elements.

Ultimately, Virtuoso Legal successfully defended Q Deck against the most commercially significant infringement claims relating to the main body of the safety panels and the connecting pins, significantly limiting J. Mac's victory to the perimeter design and the conceded passing off claim.

The takeaway for innovators and manufacturers

Developing products inspired by competitors, especially for interoperability, carries inherent IP risks. UK Unregistered Design Right protects original designs, but infringement requires showing the accused product is made "exactly or substantially to" the protected design as a whole. Significant design effort to differentiate, even if starting from a competitor's product, can potentially avoid infringement of the overall design, although specific features may still infringe. Understanding the nuances of UKUDR, including its exclusions and duration rules, is crucial.

Developing a competing product or facing a UKUDR claim? Contact our specialist IP team for strategic advice.

The legal deep dive: navigating UKUDR infringement complexities

For legal professionals, J. Mac v Q Deck offers key insights into litigating UKUDR, particularly the interplay between copying and substantial similarity, and the impact of statutory exclusions.

1. UKUDR Infringement Test: Copying + Substantial Similarity (s.226 CDPA) The case reaffirmed the two-stage test:

• Copying: A causal link must exist. Here, Q Deck admitted using Macdeck as a starting point, and internal communications confirmed intent to copy closely whilst attempting to differentiate. The copying element was clearly established, both directly and indirectly (via the Macdeck product embodying the design).

• Exactly or Substantially to the Design: This requires an objective comparison through the eyes of the informed user, considering the designs as a whole, excluding features where design right doesn't subsist (s.213(3) exclusions). Critically, copying part of a design isn't infringement unless the whole accused article is substantially similar to the whole protected design (Wooley v A Jewellers).

  • Panel Outcome: Despite clear copying intent and copying of some features, the overall impression of the main Q Deck panels differed sufficiently due to deliberate modifications (aperture shapes, surface patterns, 'X' design motif), meaning they were not substantially similar as a whole.

  • Perimeter Outcome: For the separately pleaded perimeter design (a part of the article), the similarities outweighed the minor differences, leading to a finding of substantial similarity for that specific part.

2. Impact of s.213(3) Exclusions on Infringement Analysis The judgment followed HHJ Hacon's approach in Action Storage: features excluded under s.213(3) (must-fit, method of construction, surface decoration) are disregarded during the infringement comparison.

• Pin Outcome: The Macdeck pin design comprised many functional/interface features (shaft diameter/length to fit connectors, lower disc as a stop). Once these were excluded, the judge held the remaining features (head shape, aperture, upper disc) no longer represented the 'design of the whole... article' as pleaded under s.213(2). Therefore, the infringement claim failed on this basis, even though the judge alternatively found the remaining features were substantially copied by Q Deck. This highlights the critical importance of pleading design rights correctly, potentially including parts of articles in the alternative.

3. Originality Standard (s.213(1) & (4)) The court adopted the modern EU copyright standard for originality ("author's own intellectual creation" expressing "free and creative choices" - Cofemel, Brompton), applying it to UKUDR. It rejected the argument that features dictated solely by technical function lack originality, confirming functional designs can be original if creative choices existed and were made. The judge also applied the standard UKUDR test for 'commonplace' (s.213(4)), finding J. Mac's designs were not commonplace over the prior art TRAD Deck system.

4. 'First Made Available' (s.216 CDPA) The court confirmed that making articles available for demonstration or approval on commercial sites, even without charge, can constitute being "made available for sale or hire". This triggered the 10-year term from the end of that earlier calendar year (2016), impacting the duration and potentially pushing the design into the 'Licence of Right' period sooner.

Summary of key litigation points

This case demonstrates that proving copying is necessary but not sufficient for UKUDR infringement; substantial similarity of the overall design is key. Deliberate efforts to differentiate a design, even when copying functional elements for interoperability, can defeat an infringement claim regarding the whole design. Careful consideration must be given to s.213(3) exclusions and their impact on defining the protectable design for the infringement comparison. Correct pleading, potentially including claims to 'parts' of articles, is crucial, particularly for highly functional items. Finally, the timing of market introduction activities can significantly affect design right duration.

Need expert defence or strategic advice in complex UKUDR litigation? Reach out to our experienced IP litigation team.