The English Court of Appeal has thrown out an attempt to appeal a decision in favour of Dyson about spare parts for Dyson vacuum cleaners.
Dyson sued spare parts supplier Qualtex for infringement of Dyson's unregistered design rights (UDR) in 14 spare parts manufactured by Qualtex. The spare parts were deliberately designed to look like the originals, known as "pattern parts" in the trade.
This is the latest battle between an original equipment manufacturer (OEM) and an independent spare parts manufacturer in which the OEM has relied on its intellectual property rights to prevent a third party from selling spare parts.
Finding a balance between the design rights of manufacturers and the consumer’s right to choice is a long-standing challenge for legislators. So far, the main battleground has been in the lucrative area of spare parts for cars.
Spare parts are currently being scrutinised by the European Commission, which has published a proposal to amend a directive on registered designs by harmonising the law applying to spare parts across Europe. In the UK, the Patent Office is leading the consultation process.
In his judgment, Jacob LJ reviewed the law on UDR, which in the UK is contained in the Copyright Designs and Patents Act 1988 (Act) and case law.
Section 213 of the Act protects "original designs", which is defined as any aspect of the shape or configuration (internal or external) of the whole or part of an article. A design is "original" if it is not "commonplace" in the relevant design field at the time it is created. A design will not be protected if it relates to:
- construction methods or principles;
- features of a shape or configuration to connect or fit an article to another article so that either may perform a function ("must fit");
- features of a shape or configuration that depend on the appearance of another article intended by the designer to be an integral part of the design (must match); or
- surface decoration.
These are known as "exceptions" to the right and are reviewed in detail in Jacob LJ's judgment.
To avoid infringing a UDR, a spare parts manufacturer needs to satisfy the court that the claimed design right falls within one of these statutory exceptions.
Jacob LJ paid tribute to the "painstaking and careful judgment" of the previous court (refer to ebulletin of 26 April 2005) and then concluded:
"The overall lesson here is that the exceptions to UDR created by the Act do not give a carte blanche for pattern spares. Those who wish 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. To be on the safe side they will have to make them different as far as is possible – for trying to navigate by the chart provided by this crude statute is a risky business."
The judge slated the Act as "obscure" and slated its drafting and lack of clarity, and branded design law as "a particularly abstruse branch of metaphysics".
In order to launch a successful claim based on UDR, it is clear from this case that case management will be crucial. It is important to identify with precision each and every design that is being relied on. Each aspect that constitutes a design should be spelled out and a claimant should confine claims to the designs for which they have the strongest claim.