Winter feels like an apt time for the grand return of the AGA case. It's not quite an Agatha Christie adaptation or the Strictly final, but the Court of Appeal judgment handed down 17 December 2025 makes for an interesting fireside* (*or environmentally friendly alternative) read, particularly for OEMs and those that convert/adapt/recondition products. 

The case at first instance concerned the electrification and resale of AGA cookers by UKIG and what AGA deemed to be an impermissible use of their trade marks and copyright. 

UKIG appealed the trade mark conclusion that their use of the AGA mark did not fall within the exhaustion defence because the use created the impression of a commercial connection with AGA. AGA contested the decision that UKIG's copying of their control panel was permitted because s51 CDPA applied.  

The Court of Appeal's decision relating to exhaustion is clarifying and fairly easy to follow, particularly with a recent refresher of the first instance decision (see our previous article here). Brace yourself for disappointment if you were hoping, like me, for clarification on the compatibility of the UK's copyright carve out for designs with retained EU case law. Much like a New Year's resolution that doesn't make it past the first week of Jan, there's a big build up followed by a strikingly brief explanation of why now is not the right time actually, thank you very much. 

Trade mark infringement 

The central trade mark argument at first instance concerned the application of s12(2) TMA which sets out the circumstances where the trade mark exhaustion defence will not apply when a mark is used in relation to a product that has already been put on the market. There were three circumstances identified by Nicholas Caddick KC sitting as a High Court judge on first instance where s12(2) would apply: where the condition of the resold goods had been changed or impaired; where further dealings in the goods would damage the trade mark; and finally, where further dealings would give the impression that there was a commercial connection between the reseller and the trade mark owner. On the first two, the judge found that the electrification itself (despite being a clear change of condition) and the potential use of lower quality replacement parts did not deprive UKIG of their defence and it did not amount to a legitimate reason to object. This conclusion was not challenged by AGA, offering some comfort for aftermarket operators, and concern for OEMs. However, the use by UKIG in the marketing of the converted AGAs did result in the implication of a commercial connection. It was this point that UKIG chose to appeal raising the following arguments:

• UKIG argued that the judge applied an incorrect and disproportionately trade mark proprietor friendly test of whether a reasonably attentive customer would be unable or able only with difficulty to work out whether the UKIG goods came from the AGA or an unrelated third party. This test originates from Google France, a case focusing on keyword advertising and was relied on in Portakabin in relation to exhaustion as well as keywords. The CoA agreed with UKIG that consideration of Google France 'with difficulty' test in this context was incorrect. However, despite the recitation in the relevant case law, the Google France test did not play a part of the judge's actual conclusion and therefore did not warrant overturning the decision. Through this analysis the CoA has set out a very narrow application of the Google France test (as employed in Portakabin) to situations relating to keyword advertising.

   

• UKIG also put forward that the judge was not entitled to find that a commercial connection between the products was sufficient, there had to be an inference of commercial connection between undertakings. The CoA disagreed, following Viking Gas a connection can be at the level of undertakings, but it can also relate to products. i.e. the question is not just whether customers would have the false impression that UKIG and AGA were commercially connected through UKIG's use of the marks, but would customers be given the false impression that the converted cooker itself originated from AGA. The conclusion at first instance was, they would, and the CoA agreed.

   

• Another argument was that the judge should not have carried out a balancing test between the interest of the proprietor and aftermarket businesses. In principle the CoA agreed that it was not correct to apply a general balancing test in this scenario. However, while reference was made by the first instance judge to the weight of each party's interest, this was part of the summary of the conclusion that he had already reached about the impression on consumers, it was not part of the consideration itself.

   

• Finally, UKIG raised a challenge to findings of fact made by the judge, a difficult thing to obtain on appeal. They argued that the judge's conclusions were rationally unsupportable, working back from the conclusion that if the trade mark use was permitted in relation to the electrification and repair itself, use of the mark was necessary to carry out and advertise those goods and services. As is obvious, there is no one way to market a product, even a resale product. UKIG had options for advertising, they simply choose to deploy a version that went too far.  

Copyright infringement 

Section 51 CDPA is the UK's answer to ensuring products more properly protected by design rights (a maximum of 25 years in duration) do not benefit from the longer-lived copyright simply because a document or model detailing that product is protected under copyright. However, if the product detailed in the design drawing or model is itself an artistic work, s51 will not apply, and making an article to that design may infringe copyright.  

At first instance the judge found that the AGA control panel diagram was an artistic work, but that the control panel itself was not an artistic work and therefore s51 applied. This meant that UKIG's indirect copying of the diagram in the production of their own control panel was not copyright infringement. 

AGA sought to challenge this on two grounds. Firstly, that the control panel that was detailed in the diagram was itself a graphic work (a subset of artistic works); and secondly that s51 was incompatible with retained EU law, specifically Cofemel, that prevents limits on protection where copyright has been found to subsist. 

1. AGA's reliance on Anacon Corporation Ltd v Environmental Research Technology Ltd stretched the definition of graphic work too far to be compatible with the defined list of works protected by copyright under UK law. While being "a thing to be looked at" is part of what makes a work a graphic work, that is not the only criteria. Were it the only criteria, separately defined works such as sculpture, photography, architecture or film would all be a graphic work. As a consequence, the first instance decision that the control panel was not a graphic work stood. No other types of work were advanced and therefore s51 applied.

    

2. Disappointingly in some respects, the CoA did not feel there would be any purpose in deciding this issue of law in these circumstances because it would not affect the parties' rights nor require any government action. The compatibility of EU copyright law and the closed list of UK copyright protected works has been the subject of a long running debate with judges consistently skirting the issue of whether there is actually an issue. However, given the timing of this decision coinciding with the ongoing UK design reform consultation in the UK which expressly raises the overlap between designs, copyright and s51, it perhaps makes sense that this can has been kicked down the road. 

The trade mark conclusions of both the CoA and first instance judgment are a clear guideline for aftermarket operators, particularly those carrying out alteration or conversion works. We'll have to watch this space for the next round of 'is Cofemel compatible with UK copyright', but what we can now say is that reliance on 'graphic works', whilst a novel departure from the usual 'work of artistic craftmanship' route, is a bit of a non-starter when seeking copyright protection for products or their component parts.