UKUDR Cases Flashcards
What are the facts of this case
Dyson v. Qualtex UK [2004] EWHC 2981 (Ch) & [2006] EWCA Civ 166; [2006] RPC 31
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 cleaners.
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.
What is the legal significance of this case
Dyson v. Qualtex UK [2004] EWHC 2981 (Ch) & [2006] EWCA Civ 166; [2006] RPC 31
The court set out what needs to be shown in order to establish the existence of a UK unregistered design right:
(i) that there is a design;
(ii) which falls outside the exclusion from design right;
(iii) which is original
(iv) which qualifies for protection in the UK.
What is the legal significance of this case
Dyson v. Qualtex UK [2004] EWHC 2981 (Ch) & [2006] EWCA Civ 166; [2006] RPC 31
re shape and configuration of articles
The Court said that designs are not limited to 2D shapes:
‘You can have 2D features of shape or configuration, e.g. one produced by cutting out now from a piece of paper.’
What is the legal significance of this case
Dyson v. Qualtex UK [2004] EWHC 2981 (Ch) & [2006] EWCA Civ 166; [2006] RPC 31
re what is meant by ‘aspect’ (old language)
The Court said that an aspect must be a discernible or recognisable part of an article.
What is the legal significance of
Dyson v. Qualtex UK [2004] EWHC 2981 (Ch) & [2006] EWCA Civ 166; [2006] RPC 31
re what constitutes surface decoration
On the basis that unregistered design right was developed to protect functional designs, it has been suggested that surface features that have a significance function would not be excluded under the surface decoration exclusion.
In Dyson, the Court held that because the ribbing on the handle of the vacuum cleaner functioned to provide grip, it was not excluded as surface decoration.
What is the legal significance of
Dyson v. Qualtex UK [2004] EWHC 2981 (Ch) & [2006] EWCA Civ 166; [2006] RPC 31
re the must fit exclusion
The Court held that:
(i) It does not matter if there are two ways of achieving the necessary fit or connection between the subject article (the first one referred to in the sub- section) and the article to which it fits or with which it interfaces. If the design chosen by the design right owner is a way of achieving that fit or interface, then it does not attract design right no matter how many alternative ways of achieving the same “fit” might be available.
(ii) For the purposes of the sub-section, the article with which the subject article is interfacing can be part of the human body.
(ii) The Court held that where an article comprises many smaller articles, the design of the whole article is protected under UKUDR–so though UKUDR in each part of a car might be excluded, so that a rival spares manufacturer could not be sued, UKUDR in the whole car exists and could be enforced against a rival carmaker.
What is the legal significance of
Dyson v. Qualtex UK [2004] EWHC 2981 (Ch) & [2006] EWCA Civ 166; [2006] RPC 31
re the must match exclusion
In Dyson Ltd v Qualtex Jacob LJ held that when considering whether a feature of a part (there, a replacement vacuum cleaner part) is excluded you have to consider whether there is a dependency of the kind, or to the extent, which would make the overall article in question radically different in appearance if the first article was not the shape it was.
Dyson v. Qualtex, indicates that unless the defendant “can show that as a practical matter there is a real need to copy a feature of shape and configuration because of some design consideration of the whole article, he is not within the exclusion. It is not enough to assert that the public “prefers” an exact copy for it will always do so … The more there is design freedom the less is there room for the exclusion.” (para 64). It is not enough that the features in question do in fact match or help in achieving a consistent theme with the rest of the article; the exclusion only bites where they have to match.
what is the legal significance of
Dyson v. Qualtex UK [2004] EWHC 2981 (Ch) & [2006] EWCA Civ 166; [2006] RPC 31
re test for commonplaceness
The Farmers Build case sets out the test for commonplaceness.
It seems that Dyson further clarified the test by ruling that:
all the features excluded from UKUDR by statutory exceptions (e.g. must fit, must match etc.) are first stripped away and the test for commonplace applies to what remains.
The Court also said that the “not commonplace” requirement for designs created prior to 1 October 2014 only applies to earlier designs which had been marketed in the UK or to which UK designers would be aware.
R. v Registered Designs Appeal Tribunal Ex p. Ford Motor Co Ltd. [1995] R.T.R. 68, [1994] RPC. 545
Regarding the “must match” exception, the Court found that a feature with little visual significance will be less likely to “depend” on the appearance of another. This was upheld in Dyson v Qualtex.
What are the facts of this case
Farmers Build Ltd v Carier Bulk Materials Handling Ltd & Ors [1998] EWCA Civ 1900
Related to component parts of a flurry separator and the overall design of the flurry separator. Both were found to be original and protected by UKUDR.
How is this case legally significant
Farmers Build Ltd v Carier Bulk Materials Handling Ltd & Ors [1998] EWCA Civ 1900
Case illustrates that UKUDR extends to designs that are purely functional.
This case also clarified what is meant by an original design: it must be original in the copyright sense and not commonplace.
(see other slides)
What are the facts of this case
Lord Justice Jacob has just delivered his first Court of Appeal judgment today in A Fulton Company Ltd v Totes Isotoner (UK) Ltd were rival manufacturers of cloth cases for portable folding umbrellas.
Since those umbrellas folded into an oblong shape, the cases which housed them were also oblong. Fulton’s “Miniflat” cases were of an open flat box construction with a cuff, which had a slit in one corner to facilitate insertion of the umbrella. The stitching along the lines of the case gave it a sharp box-like appearance. Totes’ cases were initially straight copies of the Miniflat case. However, once they heard of Fulton’s registered design rights, Totes changed its cases by removing one short side of the cuff altogether and making a ‘cut out’ design.
Fulton alleged infringement of its unregistered design right on the basis that the ‘cut out’ design had been made by copying the design of part of the article and was an exact reproduction of that part.
How is this case legally significant
The decision was relevant to UKUDR infringement:
The design identified is a matter for the claimant. It may be the design of the whole or part of an article (as allowed under section 213).
The claimant in an infringement action is required to specify what the design in suit is, and is therefore able to select or “trim” the part or parts of his own design for the action, and thereby the corresponding parts of the infringing product for comparison (Ocular Sciences v Aspect,49 Fulton v Totes Isotoner50).
In Fulton, the infringer copied most but not quite all of an umbrella case. The design claimed was defined as “the whole case minus a short side of the ‘cuff’ (at the open end). (Fulton had a (old-Act) registered design and sued on that too, but it was held not infringed (since part of it had not been copied)).
What are the facts of this case
Neptune (Europe) Ltd v Devol Kitchens Ltd [2017] EWHC 2172 (Pat)
Neptune makes kitchens. So does DeVOL. At one stage, DeVOL, which previously focused on its “Classic” kitchen, sold Neptune’s “Chichester” kitchen. While it sold the “Chichester”, it designed its own “Shaker” range. In 2010, the DeVOL ceased to sell the Neptune and the companies went their separate ways, DeVOL selling the “Shaker”. In 2015 Neptune sued DeVOL, claiming the “Shaker” was a copy of and infringed its design rights in the “Chichester”.
[By trial, Neptune relied upon one RCD (registered Community design) and UKUDR.
Because it is an unregistered right, and because of the flexibility in its scope resulting from the way it is defined in legislation, UKUDR often has something of “make it up as you go along” feeling to it. As the courts have previously recognised, a defendant may not know the scope of the claimed UKUDR monopoly asserted against it until it reads the claimant’s particulars of claim – and then it may find itself alleged to have infringed an array of different pleaded designs.
UKUDR may be claimed in “[any aspect] of the shape or configuration… of the whole or part of an article”. That gives plenty of options: you can rely on the article, its shape, its configuration, the shape of one part or another part, and so on. Until recently, you could also rely on “any aspect” of all these things.]
What is the legal significance of this case?
Neptune (Europe) Ltd v Devol Kitchens Ltd [2017] EWHC 2172 (Pat)
PART 1
This decision outlines the fact that the deletion “any aspect of…” from section 213(2) applies only to acts of infringement committed (and, consequently, also to all designs created) on or after 1 October 2014.
