Dyson Ltd v Qualtex (UK) Ltd

Unregistered design right may subsist in any discernible or recognisable aspect of the shape or configuration of an article or part. The statutory exclusions do not give manufacturers a general licence to copy spare parts.

The must-fit exclusion covers features which enable articles to connect or function together. Merely avoiding obstruction is insufficient. The must-match exclusion requires a practical dependency between the part’s shape and the appearance of the whole article. Consumer preference for an exact replica does not establish that dependency.

Surface decoration may be three-dimensional, but features having a significant function belong within design-right protection. Originality depends on independent creative work rather than novelty. A familiar earlier design does not make a materially redesigned article commonplace.

Dyson Ltd claimed that Qualtex (UK) Ltd had infringed unregistered design rights in 14 replica spare parts for Dyson vacuum cleaners. Mann J upheld the claims in a judgment reported at [2004] EWHC 2981 (Ch) and [2005] RPC 19.

Qualtex appealed in relation to six representative parts. Its challenges concerned the meaning and application of the exclusions for must-fit features, must-match features and surface decoration under section 213 of the Copyright, Designs and Patents Act 1988. It also challenged findings on originality, commonplace designs, infringement and the date on which articles were made available for sale.

The central question was which copied aspects of the spare parts qualified for unregistered design right and whether any errors by the judge affected the overall result.

1. Appeal dismissed unanimously. The judge made a small number of errors, but none affected the overall result. The statutory exclusions did not give manufacturers of pattern spare parts a general entitlement to copy every detail of an original part.

2. An aspect of a design must be discernible or recognisable. It need not possess visual importance when measured against the whole article. Section 213(2) of the Copyright, Designs and Patents Act 1988 permits protection of detailed aspects of part of an article.

3. The must-fit exclusion in section 213(3)(b)(i) turns on the statutory word “enable”. A feature which merely avoids interfering with another working part does not enable that part to perform its function. Physical contact is not invariably required, and a functional clearance may qualify. The bleed holes in a wand handle were excluded because they enabled the handle to maintain suction when placed against a flat surface.

4. The must-match exclusion in section 213(3)(b)(ii) requires a practical dependency between the shape of the spare part and the appearance of the whole article. Relevant considerations include whether there is genuine design freedom, whether copying is practically necessary to preserve the appearance of the whole and, as a cross-check, whether a differently shaped part would be saleable. Consumer preference for an exact copy is insufficient. Mann J was entitled to find no dependency for the wand handles, ribbing and tool adaptor.

5. Surface decoration may be three-dimensional and may be formed together with the underlying surface. The question is whether the article can fairly be perceived as having a decorated surface. A surface feature with a significant function is not surface decoration. The functional ribbing therefore remained capable of design-right protection.

6. Originality asks whether the designer used independent skill or merely copied. The visual-significance approach in Interlego v Tyco applies where the later work began as a tracing or equivalent copy. Derivation alone is insufficient. An original combination of old features can qualify, but merely attaching an old component to a new article without creative contribution does not create a new original design in that component.

7. Articles are “made available for sale” under section 216(1)(b) when existing articles can actually be obtained. Taking orders for future manufacture or delivery is insufficient.

1. Court of Appeal (Civil Division): By [2006] EWCA Civ 166, dismissed Qualtex’s appeal unanimously. Limited errors in the treatment of particular design aspects did not alter the result.
2. High Court, Chancery Division: Mann J held that Qualtex had infringed Dyson’s unregistered design rights: [2004] EWHC 2981 (Ch); [2005] RPC 19.