AGA Rangemaster v UK Innovations – High Court’s findings upheld by Court of Appeal

The Court of Appeal dismissed UK Innovations’ appeal on the finding of trade mark infringement and also dismissed AGA’s cross-appeal in copyright. 

High Court

Our article on the first instance decision appears here.

In summary, it concerned UK Innovations’ refurbishment and conversion of traditional oil-based AGA cookers to run on electric, under the branding “EControl AGA”. UK Innovations’ advertising and marketing gave the impression that it was affiliated with or connected to AGA, where it was not. 

In its defence, UK Innovations asserted that its use of AGA was descriptive and / or that the AGA cookers had previously been put on the market with AGA’s consent, and therefore its trade mark rights were “exhausted”. Both defences were unsuccessful, and so liability for infringement of AGA’s trade marks was established.

UK Innovations successfully relied on the statutory copyright exception, which excludes infringement in respect of making 3D articles from “industrial designs” (i.e. non-artistic articles). As the CAD drawing depicted AGA’s control panel, which was held to be a non-artistic article, the defendants successfully relied on this defence.

Court of Appeal

Trade mark infringement

UK Innovations claimed the High Court judge used an incorrect (and less stringent) test for the impression of a connection between the commercial entities, which was from a keyword-advertising case. It also challenged the judge’s findings of fact and stated that the conclusions reached were rationally unsupportable.

On the first ground of appeal, although the lower threshold test was mentioned by the High Court judge, it was not relied upon when reaching his conclusion. The Court of Appeal helpfully confirmed that this test is only applicable to keyword-advertising cases.

On the second ground, the Court of Appeal held that the first instance judge considered the relevant material, came to a conclusion which was open to him on the evidence and gave cogent reasons for it. There was therefore no basis to overturn his findings of fact. 

The Court of Appeal therefore upheld the finding that UK Innovations’ advertising and marketing material pointed to a commercial connection between AGA and UK Innovations, where there wasn’t one, and AGA was able to object to the further dealings of its AGA cookers on that basis.

Copyright infringement

AGA contended that the design document was for an artistic work (i.e. the control panel) and therefore the statutory copyright exception for infringement did not apply. In the alternative, that the statutory exception was incompatible with assimilated EU law. 

The Court of Appeal agreed with the original finding that the control panel was a non-artistic article. Although the control panel had artistic elements, it was primarily a functional object. Therefore, UK Innovations’ actions fell within the remit of the industrial designs exception. 

The Court of Appeal did not comment on whether the statutory copyright exception is incompatible with assimilated EU law post-Brexit, as the result would not have had an impact in this case.   

Key takeaways

Whilst each case must be taken on its facts, aftermarket businesses are generally free to refurbish and convert branded products. However, brand owners can object those further dealings if:

1. There is impairment or change to the condition of the goods;
2. There is damage to the reputation of the trade mark; or  
3. There is a false impression of connection or affiliation with the brand owner. 

The statutory copyright exception which serves as a defence to infringement continues to limit copyright protection for industrial designs.

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If you would like to discuss any of the issues raised in this case, please contact Emily Roberts, Holly Webb or another member of the IP team.