Spare part manufacturers' scope for producing matching spares restricted

Mr Justice Mann has given his judgment in Dyson Limited v Qualtex (UK) Limited [2004] EWHC 2981, which, subject to appeal, substantially clarifies the position of spare parts manufacturers producing replacement parts for complex products. In particular, it appears that the scope of such manufacturers' freedom to copy spare parts of complex products, particularly of household products such as vacuum cleaners, is significantly narrower than had been thought. Manufacturers of spare parts may have to adapt their operations substantially to avoid legal challenges based on this new interpretation of the legislation.

Facts

Dyson Limited ("Dyson"), owner of one of the UK's best-known brands of vacuum cleaner, brought proceedings against Qualtex (UK) Limited ("Qualtex"), a manufacturer of vacuum cleaner spare parts, alleging infringement of its Unregistered Design Right ("UDR") in various parts of different products. UDR is an intellectual property right which protects original designs from copying, subject to certain exceptions, without the design needing to be registered.

Qualtex admitted copying, but argued that it was in entitled to do so for various reasons, including:

• that the designs were not "original" and were therefore not protected by UDR;
• that some of the designs in dispute were "commonplace" and therefore not protected by UDR;
• that some designs were "surface decoration" and therefore not protected by UDR;
• that some designs were "methods or principles of construction", which are also excluded from the protection of UDR;
• that the term of protection given by UDR ran from the date when Dyson first offered the designs for sale, rather than when they went into production, and that consequently some of the designs, even if they had at one time been protected by UDR, were no longer so protected; and
• perhaps most importantly for the wider implications of the decision, that many of the design elements for which Dyson sought UDR did not qualify for protection because of the "must fit" and "must match" exceptions in the Copyright, Designs and Patents Act 1988 ("CDPA").

The law and the judgment

Originality

Per s213(1) CDPA, "Design right is a property right which subsists… in an original design". "Original" in this context means not copied. Qualtex argued that some of the designs in dispute were not original because they had been developed from earlier designs owned by Dyson themselves or by others. In this, Qualtex relied on comments of Oliver LJ in Interlego AG v Tyco Industries Inc [1989] AC 217 that a design which differed in only minor details from an earlier design could only be original if the differences were "visually significant". Mann J, however, qualified the visual significance test by saying that it only applied where a design had been copied and then changed in minor ways. That had not happened here; having examined the evidence, Mann J concluded that none of the designs had been "slavishly copied". He therefore concluded that they were all original.

Commonplace in the design field

In addition to the general requirement that, to gain UDR protection, a design must be "original" (see above). s213(4) CDPA states that "a design is not "original" …if it is commonplace in the design field in question at the time of its creation". Qualtex interpreted this provision broadly, arguing that the availability of prior art outside the UK, even if the design had not been marketed anywhere, could still be commonplace if designers in the field were aware of it at the relevant time. Dyson took a narrower view, arguing that only designs which had been marketed in the UK were relevant. Qualtex also argued that some of the Dyson designs were so well-known that they had become commonplace by their sheer popularity. Mann J found that a design would be "commonplace" if it was known to those working in the design field in the UK at the relevant time, although it did not have to have been marketed. However, on the facts, he found that none of Dyson's designs were commonplace. He further stated that it was not open to Qualtex to argue that the ubiquity of Dyson's designs of itself made them "commonplace", because this would be to penalise Dyson for its success.

Surface Decoration

s213(3)(c) CDPA states that "Design right does not subsist in … surface decoration". Dyson conceded that certain aspects of the designs were surface decoration. However, the disputed aspect was the shape of certain ribbing which had both decorative and functional purposes. Mann J relied on various authorities to distinguish between mere surface decoration and features which, while decorative, are nonetheless part of the overall shape and configuration of the product. He also distinguished between design features which were primarily surface decoration, but which nonetheless had a subsidiary functional purpose, which would not be protected by UDR, and design features which are primarily functional, which, notwithstanding a subsidiary decorative purpose, would be protected by UDR. In this case, Mann J found that the ribbing, which served to strengthen the parts and to improve the users' grip, was primarily functional; he said that the ribbing was an aspect of the article's shape, and if one removed the ribbing, one removed part of the article. This was more than mere surface decoration and consequently would not be excluded from the scope of UDR.

Method or Principle of Construction

s213(3)(a) CDPA states that "Design Right does not subsist in … a method or principle of construction". This provision excludes know-how, techniques and methods from the scope of UDR, which can only protect actual designs. Here, Qualtex had argued that air holes in the side of a vacuum hose were merely a method of construction. Mann J dismissed this defence, drawing a clear distinction between the mere idea of including such air holes, which would not be protected, and the actual design in which they were incorporated, which potentially could be.

Expiry of the term of UDR protection

s216(1) CDPA states that "Design right expires (a) fifteen 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 first occurred, or (b) if articles made to the design are made available for sale or hire within five years from the end of that calendar year, ten years from the end of the calendar year in which that first occurred." This argument turned on the meaning of "made available for sale". Qualtex argued that even if UDR had subsisted in the designs, in some cases it had already elapsed so these designs were no longer protected. In particular, they construed "made available for sale" to mean the date on which orders were first solicited, even though no stock had yet been manufactured. Mann J did not accept this argument, holding that a design was available for sale only when orders could actually be fulfilled, so that the time was triggered by the time of production. On that basis any UDR in the designs had not yet expired.

Must fit

Before considering the specific matters under dispute, Mann J analysed the background to the "must fit" and "must match" exceptions. The must fit exception is provided for in at s213(3)(b)(i) CDPA which states that "Design right does not subsist in … features of shape or configuration of an article which … enable the article to be connected to, or placed in, around or against, another article so that either article may perform its function". Mann J noted Qualtex's view that these exceptions should be construed benevolently in favour of the copier where spare parts were concerned, and elsewhere in his judgment he observed that the general view of spare parts manufacturers was that these provisions operated to give them a substantial degree of freedom to produce spare parts to original equipment manufacturers' designs. However, having considered the CDPA itself and the White Paper on "Intellectual Property and Innovation" of April 1986, he concluded that no such a blanket exemption had been granted, and that, indeed, he should not approach any questions of construction of the statute with the benevolence sought by Qualtex.

In particular, relying upon Ocular Sciences v Aspect Vision Care Limited [1997] RPC289, Mann J concluded that any means of achieving a fit or connection between two articles will be excluded from UDR, even though other designs might achieve the same effect, and that an interface will be excluded from UDR protection even if it has an additional function other than achieving a fit or connection between two articles. However, Mann J distinguished between designs which had the function of enabling two articles to fit together, and designs which had a function and merely happened to lie against another part. To fall within the exception, the design has to enable a connection between the parts. This conclusion has particular significance for spare parts manufacturers, who may be able to rely on the "must fit" exception in more limited circumstances than had previously been thought.

Must match

The "must match" exception is provided for at s213(3)(b)(ii) CDPA, which states that "Design right does not subsist in … features of shape or configuration of an article which … are dependant on the appearance of another article of which the article is intended by the designer to form an integral part". The public policy concern giving rise to this provision is to prevent manufacturers from having an absolute monopoly over the spare parts for the complex products they produce.

Qualtex argued that the must match exclusion applied to any design feature intended to form a harmonious part of the overall design. However, Mann J rejected this construction. He observed that this interpretation would lead to the perverse conclusion that the greater the care and expertise expended on a design, the less likely it would be to receive UDR protection, because the high level of design is more likely to lead to a complex product with an overall harmony of design (as opposed to less carefully designed products in which parts were "thrown together", which would receive more protection because the disjointedness would mean that there was no overall "harmony" of design to preserve). Instead, he held that the must match exclusion only applies if an alteration in the shape of the relevant design aspect would make the overall article radically different in appearance. Spare parts manufacturers would therefore be entitled to produce spare parts which are slightly different, but not identical to, the original parts which they are to replace.

Mann J acknowledged that this would be a difficult test to apply, but suggested that the saleability of the item could be used as a guide to assessment. If a complex product would be likely to become unsaleable by replacement of the original part with a spare part of slightly different design, then the original part would be less likely to receive UDR protection. He illustrated this by comparing cars with vacuum cleaners. A car, being a product which is used and on display outside the home, and where the image and overall design of the car is particularly important to its value, would be less likely to receive UDR protection for its component parts, because car-owners would be unlikely to accept spare parts shaped differently from the original. The public interest therefore demands that, in the interests of competition, other manufacturers be allowed to produce accurately copied spare parts. In contrast, vacuum cleaners are items used mostly inside the home, and in Mann J's view, people would be willing to accept slightly different designs of spare part for such household and domestic items.

Conclusion

As Mann J pointed out, many spare parts manufacturers supply copies of parts for complex products, including many household items, in the belief that the "must fit" and "must match" exceptions to UDR will protect them from litigation. As this judgment shows, this can no longer be taken for granted, particularly with respect to items used within the home. Spare parts manufacturers will have to consider whether to come up with their own designs or run the risk of litigation based upon this decision.

The judgment also decides a significant point of law in relation to the meaning of "available for sale" in s213 CDPA. Manufacturers can now solicit sales based on a prototype, with reassurance that their period of UDR protection will not start to run until the product enters production.