Ford Motor Company Ltd, R (on the application of) v Registered Designs Appeal Tribunal & Ors

The House of Lords dismissed the appeal. The court held that the definition of "article" in section 44(1) of the Registered Designs Act 1949 must be read as referring to a part which is "to be made and sold separately" — i.e. the part must have an independent life as an article of commerce and not be merely an adjunct of a larger article. Applying that test, a number of vehicle body components (for example bonnet and body panels) did not qualify as articles and therefore could not be registered. Because the appeal was disposed of on this ground, the House declined to determine the contested meaning of section 1(1)(b)(ii) of the Act (the "dependent on the appearance of another article" exclusion) or to entertain late substantive arguments raised by the Registrar.

Background and parties:

• Ford Motor Company Limited applied to register about fifty designs for motor vehicle components (bonnets, door panels, steering wheels, seats, wheel covers and similar parts).
• The Registrar refused registration; the superintending examiner (Mr B.G. Harden) maintained refusals for fourteen specimen designs (reported at [1993] R.P.C. 399).
• On appeal to the Registered Designs Appeal Tribunal some items were upheld as unregistrable and others accepted as in principle registrable; the Divisional Court (Queen's Bench Division) largely upheld the Tribunal, remitting one item for further consideration. Ford sought judicial review and appealed to the House of Lords by certificate under section 12(1) of the Administration of Justice Act 1960.

Nature of the application and issues:

• Ford sought registration of designs; judicial review and appellate consideration were pursued after refusals.
• The courts framed two principal legal issues: (i) whether spare parts for other objects are "articles" within the meaning of the Act (section 44(1)); and (ii) the correct construction of section 1(1)(b)(ii) (the exclusion where features of shape or configuration are "dependent upon the appearance of another article").

Evidence and lower court reasoning:

• Applications sometimes failed to identify the precise novel features. The Registrar treated the whole component (for example the bonnet) as the article whose design was claimed and rejected registration on the ground that the component's features were dependent on the appearance of the whole vehicle.
• The superintending examiner adopted the Registrar's reasoning. The Appeal Tribunal (Deputy Judge Julian Jeffs Q.C.) applied the decision in Sifam and divided components into two groups: (a) components that are merely parts forming and contributing to the overall vehicle appearance (body panels, bonnet lids etc.), treated as not having an independent commercial life and therefore not "articles"; and (b) proprietary components (mirrors, steering wheels, seats, wheel covers) which may be made and sold separately and in principle registrable. The Divisional Court agreed with that division.

Court's reasoning and decision:

• The House, through Lord Mustill, held that the words "if that part is made and sold separately" in section 44(1) should be read as implying an intention that the part is "to be made and sold separately" — i.e. the part must be designed to have an independent life in commerce. Literal focus on whether particular physical items had in fact been made or sold would produce absurd or unworkable results for design registration, because the Act deals with designs prior to manufacture.
• Applying that test, the contested body components could not be regarded as articles of commerce independent of the vehicle and so were not registrable; the appeal was dismissed on that ground. Because the outcome did not depend on resolving the construction of section 1(1)(b)(ii), and because the Registrar raised new and substantial arguments at a very late stage (including points touching on Interlego), the House declined to decide the second issue.

Procedural note and wider implications:

• The House emphasised that it would not decide issues unnecessary to the outcome nor entertain novel points not directly put to the lower tribunals; accordingly wider questions about the scope of the exclusion in section 1(1)(b)(ii) and related nuanced points were left for future cases with fuller factual material.

Appeal dismissed. The House held that for a part to be an "article" under section 44(1) it must be intended "to be made and sold separately" and have an independent life as an article of commerce; the disputed body components did not meet that test and so could not be registered. Because the appeal could be decided on that ground, the court declined to determine the contested construction of section 1(1)(b)(ii) and refused to entertain late arguments introduced by the Registrar.

Registrar refused registration; superintending examiner (Harden) maintained refusal (reported at [1993] R.P.C. 399); Registered Designs Appeal Tribunal (Deputy Judge Julian Jeffs Q.C.) heard the appeals and divided the components into registrable and non-registrable groups; Divisional Court (Queen's Bench Division) largely upheld the Tribunal and remitted one item for reconsideration; a certificate under section 12(1) of the Administration of Justice Act 1960 brought the matter to the House of Lords ([1994] UKHL 10).