Dyson Cleans Up On Spare Parts

This article was taken from the Venner Shipley Newsletter edition 19.

In December 2004 the UK High Court held that a company called Qualtex, which makes spare parts for vacuum cleaners, infringed Dyson's unregistered Design Right (DR) in a number of parts and accessories for Dyson vacuum cleaners.

Background

Dyson vacuum cleaners have a very futuristic and distinctive appearance. Qualtex made so-called ‘pattern spares’ which closely mimicked this appearance (although the consumer was in no doubt that the spares originated from Qualtex). Qualtex knew that Dyson had a reputation for vigorously defending its intellectual property rights, so initially launched a small range of pattern spares for Dyson cleaners. When Dyson took no action, Qualtex expanded its range and Dyson subsequently sued for infringement of its DR in the spare parts.

The Arguments

There was little doubt that the pattern spares made by Qualtex were very similar to those made by Dyson. Indeed, a director of Qualtex admitted that they had essentially copied the designs. However, as part of their defence, Qualtex tried to argue that the spare parts were not entitled to DR protection as they fell in one of the exceptions to protection; namely, ‘must-fit’, ‘must-match’ and/or surface decoration. Moreover, Qualtex tried to argue that Dyson had been acquiescent by not trying to stop Qualtex producing and selling the smaller range of pattern spares and that this estopped Dyson from bringing an action now.

The Outcome

In order to establish whether DR persisted in each of the spare parts, the Judge broke each spare part down into individual features and established whether DR subsisted in each of these features.

The Judge looked firstly at the ‘must fit’ exception. The ‘must fit’ exception excludes from protection any feature that enables connection to another article. The Judge applied this exception narrowly and said that it extends only to those features required to actually enable the connection (or placement) and that DR subsists in the remainder of the features.

The Judge then looked at the ‘must match’ exception. The ‘must match’ exception excludes from protection any features whose shape or configuration is dependent upon the appearance of the vacuum cleaner as a whole. In order to establish whether this exception was appropriate, the Judge determined whether the overall appearance of the vacuum cleaner would be radically different if that feature looked different. If the appearance would look radically different then this exception would apply.

The Judge then turned to surface decoration. On a number of features, there was a 3D ‘ribbing’ effect. In some cases, this ribbing was so substantial that it actually altered the shape and/or configuration of the feature meaning that DR was found to subsist in these features. Of more interest was that some of the ribbing enabled the user to grip the article (as well as maintaining the ‘futuristic look’). The Judge held that where the surface decoration was substantial enough to perform a secondary function (such as to improve grip), this went beyond surface decoration and thus DR did subsist.

With regard to acquiescence, the Judge held that Qualtex was ‘testing the ground’ by making a small range of parts knowing that it was infringing the DR hoping that, when production was increased, they could try and argue acquiescence. Accordingly, the Judge ruled that it would not be right to allow acquiescence to a defendant in this situation.

Finally, the Judge also noted that ‘commonplace’ was more than mere novelty (in a patent sense). For a design to be ‘commonplace’ it had to be commonly known within the relevant design field in the UK.

Conclusion

It is ironic that the exceptions set out above were originally included in the statute to assist the spare parts market. However, this case has potentially changed this. It should be particularly noted that this ruling could have implications for the ‘pattern spares’ market in all fields of commerce, such as the automotive spare parts market.

01 Jul 2005

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