Intellectual Property: Design - Spare Parts

By Rosanna Cooper

In Dyson Ltd v Qualtex [2004], Dyson brought proceedings against the defendant, Qualtex, a manufacturer of vacuum cleaner spare parts, alleging infringement of its unregistered design rights in various spare parts comprising different products. Unregistered design rights are unregisterable intellectual property rights that arise automatically by the operation of law and protect the owners of original designs from, amongst other things, unauthorized copying. The existence of such rights is subject to certain exceptions.

Under the Copyright, Designs and Patents Act 1988, design rights do not subsist in:

Construction methods or principles of construction; Features of shape or configuration which enable the article to be connected to or fit with another article so that either article may perform its function (known as the "must fit" exclusion); Features of shape or configuration which are dependent upon the appearance of another article of which the article in question is intended by the designer to form an integral part (known as the "must match" exclusion); or Surface decorations. Qualtex admitted copying the designs, but claimed it was entitled to do so for the following reasons:

Many of the designs were copied from Dyson's earlier designs and were thus unoriginal; The "must fit" exception applied to large parts of the designs; The "must match" exception applied to significant parts of the designs; Parts of the designs which were not otherwise excluded were commonplace; Some aspects were surface decoration; and The dates of pre-production orders accepted on the basis of prototypes of the vacuum cleaners should form the start date in calculating the period of design right protection. The Court ruled that:

Although some of the designs had been based on Dyson's prior designs, they were original;

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;

Any means of achieving a fit or connection between two articles will be excluded from unregistered design rights, even though other designs might achieve the same effect, and that an interface will be excluded from unregistered design rights, protection even if it has an additional function other than achieving a fit or connection between two articles; "Commonplace" was not to be confused with lack of novelty; and The distinction between surface decoration and the overall shape and configuration of a product may be a matter of fact and impression, or a value judgment.

Comment: Many spare parts manufacturers supply copies of parts for complex products in the belief that the 'must fit' and 'must match' exceptions to unregistered design rights will protect them from litigation. As this judgment shows, this can no longer be taken for granted. Manufacturers of spare parts may have to adapt their operations substantially to avoid legal challenges based on the findings in this recent case.

If you require further information visit us at www.rtcoopers.com

 

Invention Evaluations   Invention Evaluations

Choose the Invention Evaluation Plan that fits your goals and budget.

Inventors such as yourself who are looking to protect and profit from your invention or new product idea each have your unique needs and budgets. That is why we offer several invention evaluation plans for you to choose from that are tailored to the special needs of individual inventors.

Save Money   Invention Packages

Invention Commercialization and Profitability Program

Choose from our Basic, Advanced, or Professional Invention Combo Packages, depending on your particular needs and budget. Each combo package includes your choice of the Invention Sales Package, the Invention Licensing Package, or the Invention Marketing Package.

 

Invention Evaluations   Crowdfunding

Don't have money to develop your invention into a product?

Crowdfunding makes it possible for you to achieve your invention goal of selling, licensing, or manufacturing products based on your invention that you otherwise might not be able to do using equity or debt financing. And you don't give up any ownership stake in your invention.

 

Invention Patenting Group
161 Maple Drive
Park City, Utah 84098-5113
Telephone: (866) 279-7174
Facsimile: (435) 649-3801

Copyright 1999-2016 Invention Patenting Group. All rights reserved.

Powered by Joomla 1.7 Templates