- Dyson victorious against spare parts' manufacturer
- March 25, 2005
- Law Firm: Mayer, Brown, Rowe & Maw LLP - Chicago Office
Dyson has won its High Court case against Qualtex, a manufacturer of look-alike vacuum cleaner spare parts. The case is significant because this is the first to look in detail at UK unregistered design right law, which carries out a precarious balancing act on which aspects of spare parts can and cannot be copied without permission, and so is interesting to any manufacturer of functional products which are designed to be part of some larger item. It also contains some useful comments on the legal concepts of acquiescence and estoppel.
Unregistered design right has been part of UK law since 1989, when it was brought in to replace the long-lasting and broad protection given by copyright even to functional products. It lasts for 10-15 years, is not available for "commonplace" designs, nor "surface decoration" (see below) and does not protect aspects of designs which relate to their interfaces with other products or are dependent on the appearance of other products. The latter two exceptions are nicknamed "must fit" and "must match" and much of the Dyson judgment is spent applying these to various vacuum cleaner spare parts.
It is important to bear in mind the actual wording of the relevant exceptions, rather than relying on the shorthand nicknames:
- The "must fit" exception allows spare parts manufacturers and others to copy with impunity features of a product's shape or configuration which enable it "to be connected to, or placed in, around or against, another article, so that either article may perform its function".
- The "must match" exemption says that there is no protection for those features of shape or configuration which "are dependent upon the appearance of another article of which [the product in question] is intended by the designer to form an integral part".
The "must fit" exception: The judge in the Dyson case emphasised that it was not enough for Qualtex to say that a particular spare part, or an aspect of it, was functional or happened to be located next to another part of the cleaner, nor was it enough just to say that it was "part of a system". He therefore stuck to a precise interpretation of the relevant section and resisted Qualtex's attempts to make a general finding that the general policy underlying unregistered design right was to permit spare parts to be made without permission. Qualtex's arguments were therefore doomed to fail when it talked about parts of the cleaner which "approximately" aligned but which did not actually touch one another because this would have meant that the parts would not function properly. In addition, it is irrelevant that there are several ways of achieving the interconnection; if that is what the part does, it is not protected.
The "must match" exception: The general test to be used is whether a different part could be substituted for the one in issue, without "radically affecting" the overall appearance of the whole product. Since Qualtex also made non-look-alike spare parts, such as handles for vacuum cleaners, and had sold hundreds of these, this showed that consumers would buy alternative products and helped confirm that the "must match" exception did not apply. Qualtex had argued for a looser test of there being a visual link or consistent theme, but this was rejected.
The surface decoration exception: The case shows that surface decoration (such as ribbing on the cleaner's handle) will still be protected as long as there is a functional purpose as well (e.g. to improve grip or strengthen the plastic). If decoration is the primary purpose, it is possible that there will be no UK design right protection, but the point was left open.
Excluding commonplace designs: Designs are not protected if they were "commonplace" in the design field in question at the time they were created. The Dyson judgment confirms that something can be commonplace if UK designers are aware of it, even if it is not actually on sale. For example, in an earlier case about sash windows, designs visible in Edwardian houses were commonplace and a modern-day designer could not therefore revive them and claim rights in them.
When does the period of protection start? The provisions relating to how long UK unregistered design right lasts are quite complex. In a nutshell, the right lasts for 15 years from when the product was first made (or the underlying design document first drawn up). However, it will expire 10 years from the end of the year in which products made to the design are first "made available for sale or hire" if that is shorter. Finally, in the last five years of protection, the design right owner must grant licences and so his right is diluted to the right to receive royalties rather than being able to get an injunction.
The issue in the Dyson case was the meaning of "made available for sale or hire". Dyson had exhibited some prototypes before actual production had commenced. The judge held that the existence of the prototypes without actual products which could have been sold to customers did not start the 10-15 year period running. Again, this is good news for original designers.
Estoppel and acquiescence: The managing director of Qualtex had, some years before, won a case against a rights-owner by arguing that the latter had acquiesced in the manufacture of spare parts and so could not later change its mind and sue. Qualtex tried to run the argument again in this case, but failed because the evidence showed that it had deliberately "tested the water" by releasing a small number of products first to see whether Dyson would react and so had intentionally gone about trying to construct a defence on this basis. The defence failed because it is aimed at protecting only those who act innocently.
The judge also helpfully commented that merely standing by doing nothing, rather than actually encouraging someone, did not amount to acquiescence and that the ingredient of knowledge is only present if senior people in the organisation know what is going on.
What next? Generally, the case is good news for original designers such as Dyson. Spare parts' manufacturers will need to be extra careful in assessing whether they can copy leading product designs. Whilst Dyson won almost every single argument in court and Qualtex was found to have infringed 14 of its unregistered design rights, it is worth remembering that Dyson had conceded at the outset that many other aspects of the design of its spare parts fell within the "must fit" or "must match" exceptions.
A stronger protection for original designs is that of registered design, a monopoly right (in other words, one that is infringed even by independent designs as opposed to copying) derived from the EU Designs Directive, lasting up to 25 years and available for some spare parts. The Commission has recently proposed introducing a "repairs clause" for registered designs (analogous to the "must match" exception for unregistered design right) to liberalise the aftermarket in visible spare parts which must match the product as a whole, in particular car parts. Only the UK and eight other Member States have such an exception at present, permitting visible spare parts to be freely reproduced and marketed for repair purposes and to restore the original appearance of the product. The Commission has launched a consultation until the end of May on its proposals to harmonise the position throughout the EU.
Case reference: Dyson Ltd v Qualtex (UK) Ltd,  EWHC 2981 (Ch), 21.12.2004. For more on the Commission consultation, see http://www.patent.gov.uk/about/consultations/spareparts/summary.htm.