R v Registered Designs Appeal Tribunal, Ex parte Ford Motor Co Ltd (Ford Motor Co Ltd, Ex parte)

A component qualifies as an “article” under section 44(1) of the Registered Designs Act 1949 only if it is intended to be made and sold separately. This requires an independent life as an article of commerce.

A component designed for incorporation, whether originally or as a spare, into a particular article or the manufacturer’s own range is merely an adjunct and does not qualify. An item designed for general use may qualify, even where its principal intended use is with that manufacturer’s products.

An appellate court determines issues necessary to dispose of the dispute. It will ordinarily decline to decide an academic statutory question, especially where a new argument challenges an important authority and has not been considered by the specialist tribunals below.

Ford applied to register designs for approximately 50 motor-vehicle components. The Registrar rejected the applications. A superintending examiner maintained the rejection in a reasoned decision concerning 14 representative designs, reported at [1993] RPC 399.

The Registered Designs Appeal Tribunal held that certain proprietary components were potentially registrable but that main body panels and similar components were neither “articles” within section 44(1) of the Registered Designs Act 1949 nor registrable under section 1(1)(b)(ii). On judicial review, the Divisional Court substantially upheld that decision and remitted one item to the Registry.

Ford appealed directly to the House of Lords following a certificate under section 12(1) of the Administration of Justice Act 1960. The principal issue was whether spare parts designed for particular vehicles were “articles”. A second issue concerned the construction of section 1(1)(b)(ii).

1. Appeal dismissed unanimously. Lord Mustill delivered the leading speech. Lord Keith of Kinkel, Lord Ackner, Lord Goff of Chieveley and Lord Slynn of Hadley agreed with his reasons.

2. Per Lord Mustill, section 44(1) of the Registered Designs Act 1949 must be read prospectively. The words requiring a part to be “made and sold separately” mean that the part is to be made and sold separately. The Act concerns a design before articles embodying it are made. Attention must therefore be directed to the intended commercial characteristics of articles embodying the design, rather than to the subsequent history of individual components. The conclusion of Graham J in Sifam Electrical Instrument Co Ltd v Sangamo Weston Ltd [1973] RPC 899 was followed.

3. Per Lord Mustill, a literal inquiry into whether particular replacement parts are physically made and later sold apart from the vehicle produces anomalies. The same design might otherwise be registrable when embodied in a spare but unregistrable when embodied in an original component. The legislative purpose distinguishes an item designed for incorporation into a particular article or the manufacturer’s range from one designed for general use.

4. Per Lord Mustill, the practical criterion is whether the part has an independent life as an article of commerce and is not merely an adjunct of the larger article. Components such as the body panels in issue could not have been conceived as independent commercial items. They therefore failed to qualify as “articles” under section 44(1), which was sufficient to dispose of the appeal.

5. Per Lord Mustill, the House should not decide the construction of section 1(1)(b)(ii). That issue could not affect the outcome. The Registrar’s new argument also potentially required reconsideration of Interlego AG v Tyco Industries Inc [1989] AC 217 and had not been explored through specific factual findings in the specialist tribunals. The House’s appellate procedure is adversarial rather than advisory. It would not give opinions on the additional meanings of “intended by the author”, “integral part” or “dependent” when no decision on them was necessary.

1. House of Lords: Dismissed Ford’s appeal unanimously. The components in issue were not “articles” within section 44(1) of the Registered Designs Act 1949.
2. Divisional Court of the Queen’s Bench Division: Substantially upheld the Registered Designs Appeal Tribunal, except that one item was remitted to the Registry. A direct appeal proceeded under section 12(1) of the Administration of Justice Act 1960.
3. Registered Designs Appeal Tribunal: Held that main body panels and comparable components were not “articles” and were also excluded by section 1(1)(b)(ii). It held that certain proprietary components were potentially registrable, subject to further consideration by the Registrar.
4. Designs Registry: The superintending examiner maintained the rejection of the representative applications in a decision reported at [1993] RPC 399.