National Unregistered Design Rights Copyright

07 December 2006


1.1 Dyson v Qualtex [2006] EWCA Civ 166

In an important case for original equipment manufacturers, the Court of Appeal has ruled that there is no special regime governing the copying of spare parts, and that the Copyright, Designs and Patents Act 1988 (CDPA) was intended to give real protection to original designers.

Qualtex, a manufacturer of spare parts and accessories for vacuum cleaners, essentially marketed duplicates of Dyson spare parts. Dyson brought proceedings for infringement of their design right in particular aspects of a number of these spare parts. Qualtex admitted directly copying the relevant parts, but argued that they were entitled to do so under the “must fit” and “must match” defences, and further challenged Dyson’s claim on the grounds that their designs lacked originality, were commonplace, amounted to mere surface decorations or had outlived their period of protection.

Mann J found for Dyson at first instance, and his verdict was confirmed by the Court of Appeal. In addition to rejecting a number of challenges to Mann J’s interpretation of the ‘must fit’ provisions of the Act, Jacob LJ held that the CDPA created design right in any aspect of an article, and the wording clearly did not seek to exclude minor elements of design. He then held that the ‘must match’ exception would not apply unless the spare parts manufacturer could demonstrate that there was a real practical need to copy a feature of the original article because of the way the original had been designed.

Qualtex’s protestations that the ribbing on a handle was only surface decoration also failed, since Jacob LJ found that it also served the functional applications of strengthening the handle and improving the user’s grip. He also ruled that in cases where a design had not been copied and changed in minor ways, the correct test for determining originality was whether it had been ‘slavishly copied’, rather than assessing the visual significance of any changes. Further, a design that became very well known could not lose the protection of design right merely because it had become well known. However, there would be no further design right in any variant of the original design that was only different from the original in a commonplace manner. Finally, Jacob LJ rejected Qualtex’s arguments on expiration of protection and ruled that an article was ‘made available for sale’ under the Act at the point when orders for the article were taken rather than when production began.

1.2 Sales v Stromberg [2005] EWHC 1624 (Ch)

The Defendants sold ‘personal harmoniser’ pendants that contained energised water, said to contain beneficial properties. They sent a prototype of a personal harmoniser to Mr Sales, who advised them that the design was unsatisfactory. After receiving an assurance that the Defendants would pay him a royalty for any use of any design he suggested, Sales sent the Defendants two simple rough sketches of harmoniser designs accompanied by their dimensions - one double spiral called’ Infinity’ and one triple spiral called ‘Trinity’. The Defendants manufactured and sold harmonisers made according to the ‘Infinity’ design, but made some changes to the ‘Trinity’ design of their own volition to make it stronger. They refused to pay Sales any royalties on the basis that they had subsequently seen similar designs in rock carvings at a Neolithic site in Ireland. Sales brought proceedings for design right infringement.

Mr Roger Wyand QC, sitting as a Deputy High Court Judge, found that the fact that the designs were for simple geometric shapes did not prevent design right from subsisting. It was also irrelevant that the designs were fairly crude, since the Defendants had obviously been able to create a design from them. The Deputy Judge also found that the designs were original in the copyright sense and were not commonplace. Although the Defendants could demonstrate that pictures of spirals were common in rock art, they could not establish that spirals were common in the design of articles of any kind. Mr Sales’ claim in respect of the ‘Infinity’ design was therefore successful. However, he failed in his claim for the Trinity design since the harmoniser marketed by the Defendants had been changed and was substantially different to the original design.

1.3 Landor & Hawa International Ltd v Azure Designs Ltd [2006] All ER (D) 17

The Claimant brought proceedings for infringement of its design rights in the expander section to a rigid suitcase. Allegedly infringing suitcases had been made in China under the brand name ‘Label’, and then imported and sold by the Defendant company. It was claimed that by importing, marketing and selling the Label suitcases, the Defendants were infringing the Claimant’s UK unregistered design rights and/or Community unregistered design rights in the expander design. The Defendants argued that section 213(3)(a) Copyright, Designs and Patents Act 1988 meant that design right could not subsist in the expander since the design was solely dictated by its technical function.

The Judge held at first instance that s213(3)(a) should be narrowly construed and would not apply unless the functional purpose could not be achieved in any other way (i.e. the section does not apply simply because a design serves a functional purpose - it must be the only way of achieving that purpose). The Court of Appeal agreed with the Judge and dismissed the Defendant’s appeal.


1.4 Pall France & another v FIM Medical (12 October 2005)

The Paris Court of Appeal (4th Chamber A) confirmed its abandoning of the “multiplicity of shapes” criterion for assessing the functionality of national unregistered design right. This criterion can be defined as follows: where it is possible to achieve the same result using a variety of different shapes, these shapes must be considered as being totally independent from the result. If however the same result can only be achieved by using one specific shape, the shape itself is directly linked to the result. In the present case, the Court of Appeal confirmed its application of the “contours” criterion. In other words, the impossibility of separating the shape from the target industrial result shall be examined taking into account the shape over which the intellectual property rights are claimed. Rejecting the protection of an unregistered design right over an oral nozzle, the Court held that its shape could not be separated from the intended technical result. The fact that the shape of the design could vary was not held to be relevant: a logical distinction must be made between purely ornamental creations and those which produce an industrial result considered as “useful”.


1.5 Laufendes Auge (Judgment of 26.1.2005 - 1 BvR 157/02, GRUR 2005, 410)

Under the German law prior to 1 June 2004, design rights were considered as “minor copyrights”. Due to the possibility of design right protection for every-day designs, German courts set higher requirements for copyright protection of “utility objects” than for other, non-utility creations. German courts therefore regularly refused to acknowledge copyright protection for utility objects such as furniture, or “utility” graphical works such as logos. Copyright protection was afforded to such objects only very rarely, e.g. for pieces of Bauhaus or Le Corbusier furniture.

In this case, the Bundesverfassungsgericht (Federal Constitutional Court) had to decide whether the differentiation between “non-utility” and “utility” creations was discriminatory and therefore inconsistent with the German constitution. The case concerned a logo consisting of a stylised eye with legs (“running eye”). The Bundesverfassungsgericht held that the differentiation is in line with constitutional law. In the light of that Judgment, it cannot be expected that German courts will adopt a more generous approach towards copyright protection for average design objects.

1.6 Jeans (Judgment of 15.9.2005 - I ZR 151/02, GRUR 2006, 79, 80)

In the absence of a national unregistered design and of copyright protection, German unfair competition is often relied upon to protect product designs. German unfair competition law incorporates the concept of protection of products against so-called ‘avoidable confusions as to commercial origin’. Under the condition that the product in question enjoys competitive originality, competitors can be prevented from adopting features in their competing product which cause confusion as to commercial origin. Hence a product is in particular competitively original if it employs features with which the relevant public associates commercial origin (e.g. the BMW radiator grill). In a case which was ultimately decided under unfair competition law, the Bundesgerichtshof clarified the relationship between protection of a design by an Unregistered Community Design and protection against imitations of a product under unfair competition law. In this case, the Defendant was accused of having copied the designs of the Claimant’s denim jeans. The Claimant’s design of jeans was eligible for protection by Unregistered Community Design, which affords protection for 3 years only (Art. 11 (1) CDR) but had expired. The Defendant argued that German law could not circumvent this time limitation by providing longer protection under unfair competition law. The Bundesgerichtshof refused that argument. The Bundesgerichtshof found in favour of the Claimant as it held that claims against unfair competitive actions amounting to avoidable confusion as to origin can be asserted irrespective of protection by an Unregistered Community Design. The court referred to Art. 96 (1) CDR which provides that the CDR does not prejudice Member State’s laws relating to unfair competition.


1.7 Covington v. Alhambra (19 of April of 2006)

A recent decision by the newly created Commercial Court of Alicante (No. 1) concerned a claim filed by the US company, Covington Industries Inc, in relation to the protection of four fabric designs by copyright.

The Spanish company, Alhambra Internacional S.A., had manufactured several fabrics that allegedly infringed copyright in Covington Industries Inc’s fabric designs.


The Spanish Intellectual Property Act No. 1/1996 confirms a double protection system which provides in Article 3 that copyright is independent, cumulative and compatible with other industrial property rights existing in a work. Spanish provisions follow a “partial accumulation” system that only permits some shapes to be protected by both the Intellectual Property Act (copyright), and the Industrial Designs Act (registered design right). According to this doctrine, the protection in Spain of designs is accompanied by copyright protection only when the creation has at least a minimal artistic effort. As a result, such designs shall have dual protection to the extent they are new and have individual character (which are the two requirements for protection under the Spanish Designs Act), and likewise are original (as required by the Spanish Intellectual Property Act).

The Court’s Decision

In the decision, the Court conducted a thorough study of the requirement of originality:

The Judge considered that originality must be assessed objectively. Differing from the criteria followed in other jurisdictions, where originality is not directly related to the author’s creativity, the Judge established that an original work is one that is newly created and did not exist prior to the date of creation. Originality was therefore compared with the novelty required in patents or utility models.

Moreover, this originality has a threshold: the work must constitute a work of artistic merit to be protected by copyright.

After analysing the relevant fabric designs, the Judge concluded that the designs did not deserve copyright protection as they did not substantially differ from existing designs. The Judge stated that the designs should be protected solely according to the specific provisions of the Industrial Designs Act.


1.8 Le Corbusier (Court of Bologna, IP specialised section, order on 3 August 2006)

The Claimant, Cassina S.p.A., one of the leading Italian companies selling designer furniture, including those by the famous Swiss architect “Le Corbusier”, started an action for a preliminary injunction against Dimensione Direct Sales s.r.l., claiming the infringement of its design rights in the Le Corbusier furniture.

The Court rejected the petition filed by the Claimant, denying copyright and Community unregistered design protection.

The Court held that for works of design to be protected by copyright, the national legislator has added to the requirement of creative character the prerequisite of “artistic value”. This does not require a larger creative element in terms of quantity, but that the work, in itself, acquires an independent value within the field of the art. In this way, the national legislator has introduced a requirement for protection that is in compliance with the Community Directive EC 98/71 (which allowed throughout the whole territory of the Community the principle of double protection, afforded both by design right and copyright, to design works).

In this case, the Court decided that the extent of the artistic value present in the Le Corbusier furniture, although superior to the norm, was not sufficient in order to acquire an independent value within the field of art, if considered separately from the market of industrial products. Therefore the furniture was not protected by copyright.

The Netherlands

1.9 Brompton Bicycle Limited v Rijwielbedrijf Vincent Van Ellen BV (Groningen civil court, 24 May 2006, 73818 / HA ZA 04-673)

Following the expiry of the Claimant’s patent for a folding bike system, Brompton was faced with the presence on the market of various copies of the folding system and design of its bike.

Brompton argued that the design of its bike, both folded and unfolded, benefited from copyright protection, and that the Defendant had made a copy that was nearly identical (called the ‘Scoop One’). The court accepted these arguments, in line with the case law in the jurisdiction that can generally be considered relatively favourable with respect to copyright protection for industrial designs.

The design of the bike, when taken as a whole, is a creation that is not exclusively determined by functional elements, and for which a degree of design freedom exists. It therefore benefited from copyright protection. In reaching its decision, the court was influenced particularly by the curved tube, u-shape handlebars and free hanging cables of the Brompton bike, all of which could be changed without any impact on functionality. Further, the differences pointed out by the Defendant between the Brompton bike and the Scoop One did not detract from the global impression of a strong resemblance that was produced. The Defendant was therefore judged to have reproduced the design within the meaning of Article 13 of the Dutch Copyright Law, leading to confusion in the market that could have been avoided.

The Defendant had also infringed the copyright in the drawings contained in the Brompton manual by reproducing such pictures in the Scoop One manual.

The Defendant did not lodge an appeal and the ruling therefore became final at the end of August. Brompton was granted an account of profits, an injunction against the Defendant preventing future infringement, and permission to have all of the Defendant’s infringing bikes destroyed.