Intellectual property protection of part designs
The case was brought by Dyson, the manufacturer of the well-known vacuum cleaners,
against Qualtex, a UK supplier of spare parts for domestic appliances, including
Dyson vacuum cleaners. It concerned the intellectual property protection given
to manufacturers of spare parts by the unregistered design right regime.
The case brought by Dyson concerned the supply of spare parts by Qualtex (an
independent supplier) which are effectively a duplicate of the original part
save that they do not come from the original equipment manufacturer, and do
not bear their mark (so called "pattern parts") for Dyson vacuum
The case is significant because Mr Justice Mann, the judge hearing the case,
carried out a detailed review of the law and preceding cases on unregistered
design rights, and decided that Qualtex had infringed Dyson's design rights
when it copied spare parts for Dyson vacuum cleaners.
The law of unregistered design rights is found in the Copyright, Designs and
Patents Act 1988 (the "Act"). This Act introduced the unregistered
design right, thus affording protection to "original designs" by
law for the first time. Prior to the Act, articles made to a design were
only capable of protection if the design was registered (and the UK registered
design regime still exists), or using the law of copyright to protect the
design drawing itself. The case law leading up to the Act suggested that
the use of copyright in this way was proving too restrictive, and so the
new unregistered design right was created in an attempt to better balance
the need to protect designers of original designs against the need to allow
to source competitively priced spare parts and components for their appliances
and cars etc. The duration of the new design right was much shorter than
that of copyright, and the right was intended to allow protection for more
The Act states, at section 213, that designs rights subsist in "original
designs". A design is defined as any aspect of the shape or configuration
(internal or external) of the whole or part of an article.
Importantly the Act states that design rights do not subsist in:
construction methods or principles of construction;
- features of shape or configuration
which enable the article to be connected to or fit with another article
so that either article may perform its function
(known as the "must fit" exclusion);
- features of shape or configuration
which are dependent upon the appearance of another article of which the
article in question is intended by the
designer to form an integral part (known as the "must match" exclusion);
- surface decoration.
Finally, the Act states that a design is original of it is not "commonplace" in
the design field in question at the time that it is created.
Mr Justice Mann relied on previous cases in deciding that this excluded from
protection the interface between the spare and the article with which is was
required to fit. He felt that it made no difference whether there was more
than one way to achieve this interface, nor that the interface also performed
some other function.
Mr Justice Mann rejected the argument that this exclusion applied where an
article was designed by the designer with another article, or the whole appliance
in mind. Instead, he held that the concept of one article being "dependent" on
another could be decided by considering whether replacing the original part
with the spare in question would "make the overall article radically
different in appearance". This he acknowledged was a test of fact and
degree, and stated that when making this assessment, the test of "saleability" (i.e.
where a designer of a spare part has design freedom when designing the spare
and is not limited to producing one which is exactly like the original or
it is unsaleable), could be used as a guide. It should be noted that no such
exclusion exists under the UK registered design regime.
The concept of an original design has always been based on a two-stage test:
has the design been copied (in the copyright sense), and if not, is it commonplace
in the design field in question? Mr Justice Mann found that the Act set this
test after the "Must fit" and "Must match" tests so that
when considering whether design rights subsist, one must first remove the
parts which are excluded by the four exclusions, and then consider what remains
(or what combination of parts remains) and consider whether that (or that
combination) has been copied, or is commonplace in the design field in question.
Community Design Rights
This case tips the law of unregistered designs in favour of original equipment
manufacturers. No consideration of the law of design rights would be complete
without also considering the impact of Community design rights. When the
Community design rights (registered and unregistered) were first created,
the national laws of member States differed in how spare parts were dealt
with. The Community design right was therefore incorporated into national
law on the basis that member States should maintain their existing regimes.
In November 2003 an impact assessment study (which focussed on the automotive
industry) concluded that the Community law could be harmonised by completely
removing the design right protection for the "must match spare parts
aftermarket" (i.e. pattern parts). If this finding is implemented, then
UK original equipment manufacturers will be solely reliant on the UK unregistered
design right to protect their part designs.