AGA v UKIG: Court of Appeal uphold's first instance findings on exhaustion and copyright in designs

[Oliver Fairhurst]

AGA v UKIG: Court of Appeal uphold's first instance findings on exhaustion and copyright in designs

 Oliver Fairhurst Wednesday, December 17, 2025 - AGA Rangemaster v UK Innovations Group, Arnold LJ, Birss C, Cofemel, designs, exhaustion, Oliver Fairhurst, section 51 CDPA

The IPKat reported on the first instance decision in AGA Rangemaster Group Ltd v UK Innovations Group Ltd & Anor [2024] EWHC 1727 (IPEC) (Alessandro Cerri, here), in which Nicolas Caddick KC partly dismissed claims for trade mark and copyright infringement brought by the range cooker/heating appliance supplier, AGA. This post covers the appeal of that decision by the defendant, UKIG, and a cross appeal by AGA. 

That earlier IPKat piece warrants (re-)reading, but in short, AGA objected to the sale of refurbished and electrified second-hand AGA cookers supplied by the defendant UKIG. The judge rejected the main trade mark claim (i.e. the electrification of second-hand cookers), agreeing with UKIG that it had an exhaustion defence under s.12 TMA. Crucially, the court found that AGA did not have legitimate grounds to object to the ongoing trade in converted AGA cookers, but it could object to some of the trade mark uses. 

The judge also rejected AGA's copyright infringement claim in respect of the alleged indirect copying of the design document used to create the control panel, which brought into play the interaction of design rights and copyright as governed by s.51 CDPA, Cofemel and the compliance of UK copyright law with EU copyright law.

Quite unusually, the judgment is split between the Chancellor of the High Court, Sir Colin Birss, and Lord Justice Arnold, with the former addressing the trade mark appeal and the latter the copyright one. 

The trade mark infringement appeal

AGA did not appeal the finding of non-infringement of its trade marks in the trade of converted cookers. However, UKIG appealed the finding that its marketing materials (which had referred to "eControl AGA" and "AGA eControl", 'eControl' being UKIG's name for its electrification equipment and services). 

At first instance, the judge identified three situations in which a trade mark proprietor might have legitimate reasons to oppose further dealing in what would otherwise be products in respect of which its rights are exhausted. Those were: (1) impairment or change to the condition of the goods (see s.12(2) itself), (2) damage to reputation (Dior, Case C-337/95), and (3) the impression of a connection (e.g. Viking Gas, Case C-46/10; Portakabin, Case C-558/08). The Chancellor agreed with this summary, albeit stressing that they are not an exhaustive list ([23] and Bristol-Myers Squibb (Joined Cases C-427/93, C-429/93 & C-436/93) at [39]).

UKIG criticised the judge's application of the test for infringement from Google France (Joined Cases C-236-08 to C-238/08) to this non-keyword advertising case, i.e. that the average consumer could tell the origin of the goods only 'with difficulty'. The Chancellor agreed with that criticism, finding that the 'with difficulty' test is only applicable to the particular circumstances of keyword advertising, but that the original decision would stand as the error did not justify overturning the decision. This decision is an interesting clarification of the applicability of the Google France test albeit one which this Kat respectfully suggests is not as black and white as it first appears in [27], [30] and [39]; keyword advertising is a particular context, but other contexts might also warrant the same test being applied. 

UKIG also criticised the judge's finding that a connection (e.g. as in Portakabin and BMW) could be found by reference to the products being connected (i.e. that UKIG's refurbished AGA cookers are connected to AGA because they were made by AGA). It was put that this was too favourable a test for trade mark owners. The Court of Appeal confirmed that the connection did not need to be between the undertakings (the products could suffice), and there was no error. 

The Chancellor also rejected the criticism that the judge had set out to balance the competing interests of the proprietor and the defendant in an abstract way. The Court found that the judge had stated that the claimant's legitimate interests in there not being a suggestion of a connection were not outweighed by the defendant's rights to market the goods was a statement of the result, not the legal test. The judge had applied the correct test by assessing whether the dealings of the alleged infringer gave the impression of a commercial connection. 

The Chancellor also distinguished the case from Bristol-Myers, and the particular circumstances of pharmaceuticals and parallel importing.  

There was another point taken on appeal that the finding that advertising materials referring to "eControl AGA" was infringing was rationally unsupportable. Underlying this argument was that it was no other way for UKIG to refer to its converted AGA cookers converted with its 'eControl' technology. This was rejected on the basis that there was clear evidence that entitled the judge to reach the finding he did, and that there was no excuse for using the composite of 'eControl' and 'AGA'. 

Having dismissed the appeal, the Court did not need to consider AGA's cross appeal in its respondents' notice about post-sale confusion, but the Chancellor considered that the judge was entitled to reach the decision he did on the evidence.  

The copyright appeal

This is the point that many will find more intellectually interesting, but also has practical significance. 

At first instance the judge had rejected the claim that by copying the control panel found on AGA cookers, UKIG had indirectly copied the design drawings for the feature, finding that while UKIG had copied the AGA control panel, a defence under s.51 CDPA was available.

Section 51 delineates copyright and design right protection for all but artistic works. When it applies, it prevents a finding of copyright infringement in design drawings and models for designs that are protected by UK design right (which protects the shape and configuration of a product). It is widely understood as being aimed at preventing copyright protection for industrial designs. 

There were two grounds to AGA's appeal: (1) that the AGA control panel design drawing was an artistic work (so s.51 did not apply), and (2) that if s.51 did apply, that section is incompatible with assimilated EU copyright law (e.g. Cofemel).

Is the design drawing an artistic work?

The design drawing relied on was as follows:

It is plainly a drawing/diagram, so would appear at first blush to be an artistic work within the meaning of s.4 CDPA. However, the question was whether the control panel itself was an artistic work, which the judge had found it not to be. UKIG sought to argue that as the panel was "a thing to be looked at", it was such a work (citing Jacob J in Anacon Corporation Ltd v Environmental Research Technology Ltd [1994] FSR 659, where a circuit diagram had been found to be a copyright work). 

UKIG accepted that being "a thing to be looked at" is required for something to be a graphic work, being a "thing to be looked at" is not sufficient to be a graphic work. This is understandable given that many things that can be looked at are graphic works, but many others are not. Arnold LJ felt that AGA's interpretation would stretch "graphic" far beyond its normal meaning. He endorsed HHJ Hacon's description in Response Clothing Ltd v Edinburgh Woollen Mill Ltd [2020] EWHC 148 (IPEC), where HHJ Hacon had referred to graphic works as being things where the author has made marks on something, slightly extended to more clearly encompass graphic design. 

Arnold LJ went on to focus on the panel's functional nature, despite the fact that "it incorporates artistic elements, and in particular graphic elements". As the control panel was not a graphic work (and it was not claimed to be any other form of artistic work), s.51 applied. 

Is s.51 compatible with EU law?

UKIG argued that, if the control panel met the threshold in Cofemel (which the judge had found it did), it is protected as a copyright work and s.51 therefore limits protection in a way that is impermissible under EU copyright law. The argument then went that s.51 was therefore incompatible with EU law, and initially at least AGA even sought a declaration of incompatibility. 

Somewhat disappointingly, albeit understandably, the judge declined to determine this point. He said it would serve no purpose and be a "wholly academic question" following Brexit. So we still have no appellate authority on the application of Cofemel in the UK post-Brexit. 

Takeaways

The key points in this case are the trade mark ones. The bounds of what is permissible for third parties to do in respect of genuine goods in respect of which rights have been exhausted is a highly fact-sensitive question. However, the clarification on the limited applicability of Bristol-Myers is valuable, as is the clarification on the applicability of the Google France test. Much remains to be fought over in these areas. 

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