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European IP Bulletin, Issue 20, March - Designs
Designs
6. Dyson Vacuums Up the Secondary Market
In the Dyson v Qualtex [2004] EWHC 2981 (Ch) decision of 21 December
2004, Mann J provided a useful review of the law of unregistered design right.
The action was a claim by Dyson for infringement of its unregistered design
right which it claimed in respect of a number of parts for its vacuum cleaners,
copies of which were made by Qualtex for use in Dyson vacuum cleaners. Qualtex
was one of the UK's leading suppliers of spare parts for domestic appliances. It
sought to defend its position by claiming that the parts could not be protected
under the Copyright Designs and Patents Act 1988 (CDPA) as they were not
original and they were commonplace. Qualtex also argued that the purpose of the
‘must fit’ and ‘must match’ exceptions was to protect spare parts manufacturers,
and therefore the exceptions should be construed in its favour accordingly.
Mann J disagreed with the submissions put forward by Qualtex. He ruled that
Qualtex had infringed the 14 unregistered design rights belonging to Dyson by
copying each of the parts which were the subject of the action.
Mann J held that the wording of the ‘must fit’ exception did not have to be
construed particularly narrowly or widely. It did not matter if there was more
than one way of achieving the fit between the subject article and the one to
which it is fitted: if the design chosen is a way of achieving that fit, then
regardless of how many ways of achieving that fit are available, there is no
design right in the connecting part. It was insufficient for a defendant to use
the must fit exception successfully to argue that the design features of an
article merely enabled it to be connected with another. It had to be proven that
the features allowing the fit also allowed the article to perform its function.
Qualtex also argued that the design right protection had commenced on Dyson’s
marketing of a prototype. Section 216 of the CDPA sets the term of the design
right at the lesser of 15 years from the end of the calendar year in which the
design was first recorded in a design document or an article was first made to
the design, whichever occurred first, or if articles made to the design are made
available for sale or hire within five years from the end of that calendar year,
10 years from the end of the calendar year in which it first occurred.
Again, Mann disagreed. He accepted Dyson’s argument that “making an article
available” implied capability to satisfy orders from customers.
Finally, Qualtex argued that Dyson was estopped from asserting its rights since
they had knowledge of the sales of the parts and had encouraged the continued
sale by standing by and not taking action immediately.
Mann J held that mere acquiescence or inaction was no bar to Dyson maintaining
breach of design right. Rather, knowledge must to be actual knowledge at an
appropriate corporate level. Qualtex had argued that the practice in the
industry was to be aware of new suppliers of spare parts, but the facts showed
knowledge at Dyson only at the level of a marketing account manager. Mann J
considered that even if Dyson had objected, Qualtex would have continued to
manufacture to force Dyson to take action, therefore no detriment flowed to
Qualtex. Central to the facts of the case was Qualtex’s claim that it was
following the industry-recognised practice of ‘testing the water’ with the
introduction of its rival parts on to the market. Mann J brushed this aside.
Qualtex was merely trying to establish a new “estoppel by entrapment”.
As a result, manufacturers considering the introduction of potentially
infringing products onto a market must be aware of the extensive rights that
might exist in spare parts and the precise duration of those rights.
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HOT TOPICS | COPYRIGHT |PATENTS | TRADE MARKS
