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European IP Bulletin, Issue 31, May 2006 - Designs

Designs

10. Spare Parts and the "Risky Statute"

On March 8th 2006, the Court of Appeal delivered its judgment in Dyson Ltd v Qualtex (UK) Ltd [2006] EWCA Civ 166, deciding that Dyson owned unregistered design right (“UDR”) in 14 spare parts for its vacuum cleaners, and concluding that the design rights had been infringed by spare parts manufacturers.

The case focused on the dilemma which the UDR sought to solve: how to achieve a balanced competitive environment whilst respecting the property rights of original designers and manufacturers of consumer items (“OEMs”). In relation to spare parts, independent manufacturers wish to imitate the original manufacturer's part as closely as they can as these sell better than a part which works as well but looks different. There are two main methods by which spare parts are excluded from UDR protection in order to achieve such a competitive balance. First, one can show that the designs must be excluded as they fall foul of the “must fit” or interoperability exclusions (ss. s.213(3)(b)(i)and (ii)). In relation to this provision, the Court agreed that these provisions are to be interpreted as follows:

1. 1. If the design chosen by the design right owner is a way of achieving that fit or interface, then it does not attract design right no matter how many alternative ways of achieving the same “fit” might be available.
   2. The must fit provision can apply to interfaces between inanimate articles and the human body.
   3. Design right protection is excluded even if the relevant part of the design performs some function other than the function described in the law (for example, it is decorative, or has an additional function). 

   The second means of excluding spare parts is to prove that they fall foul of the must-match (or dependency) provision. Here the Court must ask whether there is a feature of shape of the part which is dependent on the appearance of the whole machine. The appellate court here was of the view that one had to approach these provisions bearing in mind that Parliament did not intend to exclude all spare parts, or even all externally visible portions of spare parts. Only such parts which were “dependent on the appearance” of the whole article: the paradigm example being body parts of cars. Thus, unless the spare parts dealer can show that as a practical matter there is a real need to copy a feature of shape or configuration because of some design consideration of the whole article, the spare parts dealer cannot claim protection under the spare parts exclusion. It is not enough to assert that the public “prefers” an exact copy for it will always do so.

   A final question was whether the design for the spare parts was “original” i.e. the court must be satisfied that the design for which protection is claimed has not simply been copied (e.g. like a photocopy) from the design of an earlier article, and that the design was not “commonplace”. For the latter purpose it is necessary to ascertain how similar that design is to the design of similar articles in the same field of design made by persons other than the parties or persons unconnected with the parties. In the field of designs of functional articles, one design may be very similar to or even identical with another design and yet not be a copy. 

   In conclusion, Lord Justice Jacob gave a frank warning to all spare parts manufacturers by advising them that the exceptions to the UDR created by the Act do not give a carte blanche for selling spare parts, and that those who wished to make spares during the period of design right must design their own spares and cannot just copy every detail of the OEM's part – “for trying to navigate by the chart provided by this crude statute is a risky business.”

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