“Comparison of the pre-1988 Act case law with the provisions in Part III of the 1988 Act suggests that the purpose of introducing the design right was to reduce the extent of protection from copying afforded to the designs of industrially produced articles and, in the case of spare parts, to remove protection from copying completely by express provision (see section 213 (3)(b).”
“3.21 British industry relies to a great extent on its innovative abilities. It is clear that there are many innovative industrial products which are costly to design but which are not truly inventive and which therefore do not qualify for patent protection. Accordingly, the government has concluded that some protection should be available to give the manufacturer who has spent money on design the opportunity to benefit from his investment, thus providing an incentive to further investment. It has also concluded that this protection should extend to spare parts but it readily accepts that the full protection of copyright law would be excessive.”
“3.26 The remaining alternative considered, and the one that the government intends to follow, is to provide protection on copyright principles but without the more objectionable features of full copyright protection… Where the functional article is also a spare part it is arguable that the potential for monopolistic abuse should be avoided by giving no protection outside patent and registered design systems; the House of Lords decision in British Leyland –v- Armstrong Patents Company is consistent with this approach. On the other hand, the Monopolies and Mergers Commission, in its report on the Ford Motor Company’s exercise of its copyright in car body panels, which are manifestly mass-market spare parts, recommended that the term of protection for such panels should be five years. The law must however deal with all classes of articles, whether they be spare parts, components of more general utility or self contained products… Since it is not practicable to distinguish narrowly between articles in generally applicable legislation, a compromise is necessary. The government considers however that the basic premise should be that all original designs deserve a period of protection to give the designer a market lead over the copier. 3.27 Against this background, the government proposes to introduce a new form of protection against copying for original designs, including designs of spare parts…”
“213.-(1) Design right is a property right which subsists in accordance with this Part in an original design.”
“(3) Design right does not subsist in – (a) a method or principle of construction …”
“(3) Design right does not subsist in – (b) features of shape or configuration of an article which – i) enable the article to be connected to, or placed in around or against, another article so that either article may perform its function …”
“On the other hand a new form of right, design right, was created to give a much shorter, but essentially copyright-like, type of protection. The legislature seemed to think that this disposed of most of the abuse which was thought to have flowed from the way the law was applied under the 1956 Act. There was no need for a broad spare parts exception of the British Leyland type. On the other hand proprietors of design rights were not to be able to secure a completely watertight protection for their designs. The must fit and must match provisions were drafted so as to limit design right but in narrowly defined ways. As a broad generalisation, the must fit exception stopped manufacturers from monopolising the market in spares and consumables by preventing them from obtaining design right in the interface between the consumable or spare and the rest of the article. If a trader wanted to copy a consumable for, say, a photocopying machine, for example the photosensitive drum kit, he was to be entitled to make his own drum kit. To ensure that it fitted into the original equipment, those features, but only those features, of the original design which enabled the drum kit to fit could be reproduced. This did not mean that it was permissible to copy all the rest of the features of the drum kit. “The point can be put in a slightly different way. When the legislature included the must fit provisions in the Act, was it intending to ensure that competitors were to be able to supply the same component, or merely something which fitted into the composite article of which it was a part? If the latter, then it is only the interface which is excluded from protection, not the rest of the design. If it is the latter, the competitor has to do his own design work except for the interface. In my judgment it is tolerably clear that the legislature only wanted to deprive the interface feature of protection. Similar considerations applied to the must match provisions. In addition to this, it must be borne in mind that design right applies to functional designs. Therefore, the fact that a component for a composite article is functional does not, per se, mean that its features fall within the must fit provisions. They may or may not.”
“Furthermore a feature which meets the interface criteria must be excluded even if it performs some other purpose, for example that it is attractive. There is also nothing in the provision which requires the feature to be the only one which would achieve the proper interface. If a number of designs are possible each of which enables the two articles to be fitted together in a way which allowed one or other or both to perform its function, each falls within the statutory exclusion…. Mr Waugh, who argued this part of the case on behalf of the plaintiffs, said that this provision could have no application to the design of contact lenses. Even if all the features of his clients’ designs are there to enable the lenses to fit on the eyes and under the eyelids, section 213(3)(b)(i) is irrelevant. For the latter to operate the design features of the article in suit, i.e. the contact lens, has to be there to interface with another article. But, he said, an eye is not an “article” at all. It is part of the human body. The word “article” means something inanimate which is not and never has been alive. No support for this submission is provided by any of the dictionaries I have looked at but, in the end, I do not think that this is a matter of dictionary definition. What counts is the presumed legislative intent behind the provision. It seems to be that the subsection is drafted in wide terms to exclude all interface features. The word “article” is not intended to have a restricted meaning. It could just as well have been replaced by the word “thing”
“There is no assistance given in the 1988 Act as to what does or does not constitute surface decoration. In my judgment, the expression “surface decoration” in section 213(3) and section 51 is apt to include both decoration lying on the surface of the article (for example, a painted finish) and decorative features of the surface itself (for example, beading or engraving). It was suggested in argument that the meaning of the expression “surface decoration” should be confined to features which are essentially two-dimensional, for example a painted finish. I can see no reason to give the expression such a restrictive meaning, nor can I see any reason why what would otherwise be surface decoration should cease to be surface decoration merely because it also happens to serve some functional purpose, for example decorative beading which serves to conceal a joint. “ The judge’s findings in relation to the features that were surface decoration were based on what the judge thought plainly to be the case. In relation to the V-grooves he said: “The V-grooves are, in my judgment, plainly surface decoration. Mr Wilkinson told me in evidence that he used the V-grooves as a decorative device to highlight the rounded corners (that is to say the quadrant corners) and, viewed objectively, that is what they achieve”
“On the other hand, I do not regard the cornice as surface decoration. To do so would, in my judgment, involve straining the natural meaning of that expression. The same applies in my judgment to the profile of the cornice which dictates the shape of the cornice as a whole. Nor could the quadrant corners or the recessed panels be characterised as surface decoration. They too form part of the overall shape and configuration of the unit and are as such liable themselves to be the subject of surface decoration.”
“[The features in question] do not seem to me to be mere surface decoration. On the contrary, I consider that they are significant parts of the shape and configuration of the case …”
“… I do not accept that a design feature which … exists in a third dimension, but only in a small third dimension, must be surface decoration. It might be, but it does not have to be. There is a value judgment for the court to make …”
“They are an important part of the configuration of the article as a whole. They are not merely decorative features which have an incidental functional effect, like the example of beading over a crack in Mark Wilkinson. … I am satisfied in any event that the dominant consideration was the functional importance of the circular protrusions. Moreover the question here is not whether the design is aesthetic, but whether it is merely surface decoration.” “They are an important part of the configuration of the article as a whole. They are not merely decorative features which have an incidental functional effect, like the example of beading over a crack in Mark Wilkinson. … I am satisfied in any event that the dominant consideration was the functional importance of the circular protrusions. Moreover the question here is not whether the design is aesthetic, but whether it is merely surface decoration.”
“(4) A design is not “original” for the purposes of this part if it is commonplace in the design field in question at the time of its creation.” “Commonplace” is not to be confused with lack of novelty. It is a narrower concept than that. A design which has occurred before is not novel; but the fact that it exists elsewhere does not necessarily make it commonplace. The flavour of its meaning was captured by Laddie J in Ocular Sciences at pages 428-9: “It is always undesirable to replace one ambiguous expression by another, and for that reason it is not right to redefine the word “commonplace” in 1988 Act, but it seems to me that the flavour of the word is much along the lines suggested by Mr Pumfrey. Any design which is trite, trivial, common-or-garden, hackneyed or of the type which would excite no peculiar attention in those in the relevant art is likely to be commonplace. This does not mean that a design made up of features which, individually, are commonplace is necessarily itself commonplace. A new and exciting design can be produced from the most trite of ingredients. But to secure protection, the combination must itself not be commonplace. That is what the European Directive and 1987 Regulations say expressly and what is implicit in the 1988 Act. In many cases the run of the mill combination of well known features will produce a combination which is itself commonplace.”
“What relevance to the United Kingdom market has a design which is commonplace in Vanuatu?”
“I would therefore restrict the ‘commonplace’ inquiry to what was available in the United Kingdom at the time the design was created.”
“44. In my judgment, there is no misdirection or error of principle in the approach of the deputy judge to “old” designs of horns. The statutory question does not depend on when other designs in the design field with which comparison is to be made were first produced or on when they were in use or whether they have fallen into disuse and become “historical designs”
“Therefore it is possible for design right to subsist in the design of the part of the article, which is not excluded under the must match provisions. The combination of features left after individual features are excluded under these provisions is the design in issue. If that combination of features is commonplace, the design is not protected.”
“(6) Design right does not subsist unless and until the design has been recorded in a design document or an article has been made to the design.”
“216 – (1) Design right expires – (a) [not applicable] (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.”
“(1) Any person is entitled as of right to a licence to do in the last five years of the design right term anything which would otherwise infringe the design right”
“(3) Design right does not subsist in – …… (b) features of shape or configuration of an article which – (ii) are dependent upon the appearance of another article of which the article is intended by the designer to form an integral part …”
“As a matter of practical commonsense, if a door panel is to be replaced, it must be replaced by one which, for all practical purposes, is the same as the original.”
“All of them are visible on the car as sold but substitutions can be made without radically affecting the appearance or identity of the vehicle.”
“As to design freedom, Mr Silverleaf [counsel for the respondent part-makers] says that the question is whether the manufacturer of the spare part has design freedom. If he has, then he is a candidate for registration. If he has not, then he is not such a candidate. The design freedom in the latter instance is in the original designer of the car. So, with a particular spoiler which figured a fair amount in the argument, the maker of that spare part will have to produce one that looks exactly like the original, or it is unsaleable. He has no design freedom. I accept that argument.”
“Although bulges on handles were not very widespread …”
“Furthermore the more recent cases indicate, in my judgment, that the application of the Ramsden v. Dyson, L.R. 1 H.L. 129 principle – whether you call it proprietary estoppel, estoppel by acquiescence or estoppel by encouragement is really immaterial – it requires a very much broader approach which is directed rather at ascertaining whether, in particular individual circumstances, it would be unconscionable for a party to be permitted to deny that which, knowingly or unknowingly, he has allowed or encouraged another to assume to his detriment than to inquiring whether the circumstances can be fitted within the confines of some preconceived formula serving as a universal yardstick for every form of unconscionable behaviour.”
“The overwhelming weight of authority shows that detriment is required. But the authorities show that it is not a narrow or technical concept. The detriment need not consist of the expenditure of money or other quantifiable financial detriment, so long as it is something substantial. The requirement must be approached as part of a broad inquiry as to whether the repudiation of an assurance is or is not unconscionable in all the circumstances.”
“The pleaded case and the evidence did not establish any reliance by Carier on any representation or conduct on Farmers Build inducing a reasonable belief in Carier that the design rights did not exist or would not be enforced, so as to prevent Farmers Build from enforcing their legal rights within the limitation period.”
“There was no evidence to support the judge’s conclusion that Farmers Build had in any way encouraged Carier to continue to put time and money into developing their business in the belief that Farmers Build had decided not to pursue a claim for infringement of design right. There is no evidence that Farmers Build had lulled Carier into a false sense of security or into thinking that Farmers Build had abandoned any intention to pursue a claim against them.”
“Farmers Build had twice intimated to Carier their belief that Carier were infringing their unregistered design right, but Farmers Build had not created any expectation that Carier would not be sued and Carier had not relied on any expectation.”
“Q. You thought you knew something about acquiescence? A. Indeed. Q. And you thought that if Dyson ignored you, that would give you an acquiescence defence if they later tried to sue you? B. That is right.”
“237(1) Any person is entitled as of right to a licence to do in the last five years of the design right term anything which would otherwise infringe the design right. (2) The terms of the licence shall, in default of agreement, be settled by the comptroller.”