Dyson decision: bad news for the spare parts industry?

Dyson, the well-known domestic appliance company, claimed that Qualtex, one of the leading suppliers of duplicate spare parts for domestic appliances, had infringed its unregistered design right under the CDPA in relation to 14 spare parts and accessories for its iconic bagless vacuum cleaners.

There are two sources of supply for spare parts: the OEM and the independent manufacturers and suppliers who supply two different kinds of spares. The first type of spare is functional and does not attempt to reproduce the appearance of the original. The second type is a part that is a duplicate of the original spare part (but without the OEM's trade mark).

The dispute concerned parts that were made by Qualtex to closely resemble Dyson original parts and accessories. Qualtex admitted that these had been directly copied from Dyson original parts but said it was entitled to do so because duplicate parts are an important part of the aftermarket in spare parts. Qualtex claimed that customers often prefer to buy a part which looks exactly like the original, whether to preserve the overall appearance of the original vacuum cleaner, or simply because they think that it is in some way safer to buy a part that looks like the original.

Qualtex raised a number of defences under the CDPA, in particular that the parts should be excluded from protection under the so-called "must fit" and "must match" provisions, and that they amounted to mere surface decoration and were commonplace.

The High Court found that Dyson's designs had been infringed. Mann J held that spare parts are not to be treated any less generously than other types of design in respect of their protection by unregistered design right. Any third party design that resembles an original part therefore runs the risk that it infringes the unregistered design right in that part.

However, any attempt to enforce design rights in such parts is likely to be met with a challenge, as in this case, that they be excluded from protection by what have become known as the "must fit" and "must match" provisions of the CDPA.

The judge commented in particular on the following:

Must match. Under the CDPA, design right does not extend to features of shape or configuration that are dependent upon the appearance of another article of which the article is intended by the designer to form an integral part (section 213(3)).

The judge said that, when deciding whether it is possible for a third party to copy the appearance of a design, it is necessary to assess the extent to which the design "depends" upon the appearance of another article of which the design forms part. "Dependence" in that context requires an assessment of the extent to which the design of the whole article would be radically different in appearance if the design features of the subject design were changed.

If the design could be changed without radically changing the overall appearance of the whole article then it is not necessary to replicate the design and the must match exclusion will not apply.

Whether there is the necessary dependence can be checked by enquiring what sort of market there is or could be for a non-replica design: that is, would a non-replica part be acceptable to consumers?

This interpretation of the exclusion will be a blow for spare parts manufacturers who may have been relying on its having a broader application.

Must fit. Design right does not extend to those features of shape or configuration of an article that enable the article to be connected to, or placed in, around or against, another article so that either article may perform its function (section 213(3), CDPA).

The judge held that if the design is a way of achieving the necessary fit, then the connecting parts do not attract design right protection no matter how many alternative ways of achieving the "fit" or "connection" are available.

The "must fit" section can operate even if the relevant part of the design performs some other function, for example, it is decorative. In addition, the interconnecting article can be part of the human body (for example, the design features of a contact lens which "must fit" the human eye would be excluded).

The parts that fit together or connect will be excluded from protection but this does not prevent the other design features from being protected.

Surface decoration. Design right does not subsist in surface decoration (section 213, CDPA). This exclusion can cover both two-dimensional and three-dimensional design features.

However, the judge held that design features that are part of the overall shape and configuration of an article are not "mere surface decoration." If a design feature serves a functional as well as decorative purpose then the functional purpose will save it from the exclusion unless it is subsidiary to the decorative purpose.

Commonplace designs. Design right only subsists in an "original design" and a design is not original if it is "commonplace" in the design field in question at the time of its creation (section 213(4), CDPA).

When deciding if a design is protected by design right, the court will consider which of the claimed features are excluded by the other exceptions first and then consider whether or not the remaining features are commonplace.

The judge added that to be original the design must not have been simply copied from another design. The fact that a design existed elsewhere beforehand and is not therefore novel does not necessarily mean it is commonplace. For the design to be unoriginal on the commonplace basis it must be commonplace in the relevant design in the UK.

Availability for sale. Design right expires either 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 (section 216(a), CDPA), or, 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 (section 216(b), CDPA).

Qualtex and Dyson disagreed about the meaning of "made available for sale" under section 216(b). Qualtex argued that the marketing of a prototype initiated the ten-year term, while Dyson claimed that the triggering event was the start of the production run (which took place in the year after the prototype was marketed).

The judge agreed with Dyson. The statutory wording implied that articles made to the design were "made available" in the sense that orders could actually be fulfilled; this would therefore not extend to prototypes or samples, which were examples of what would, in due course, be available for sale.

Following this decision, OEMs should consider whether any independent manufacturers are producing replicas of their replacement parts. If so, they should determine when the OEM part was first marketed and then consider with their legal advisers the benefits and risks of attempting to enforce any design rights which may be embodied in such parts.

They should also ensure that their documents are in order so that they can easily prove they own any relevant design rights that they may wish to seek to enforce in the future.

Independent manufacturers should, along with their legal advisers, identify which (if any) of their products resemble OEM parts.

They should then investigate: