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UK Unregistered Design Right – Is It Any Clearer?

By Brian Whitehead, Consultant

The provisions of the Copyright Designs and Patents Act 1988 (“CDPA 1988”) which deal with the UK unregistered design right are notoriously poorly drafted and unclear. Almost two decades after the provisions came into force, Jacob LJ said in Dyson Ltd v Qualtex (UK) Ltd [2006] EWCA Civ 166:

“It has the merit of being short. It has no other … The amount of textbook writing and conjecture as to the meaning is a testament to its obscurity. We just have to do the best we can, trying to arrive at “an interpretation which the reasonable reader would give to the statute read against its background” … The absence of any clear policy, as to where the line of compromise was intended to run, means that brightline rules cannot be deduced”.

In 2014, an attempt was made (in the Intellectual Property Act 2014) to clarify the provisions. The following underlined words in s. 213(2) were deleted: “In this Part ‘design’ means the design of any aspect of the shape or configuration (whether internal or external) of the whole or part of an article”. The underlined words had given rise to particular difficulties – there were competing views in the case law and practitioner text books as to what they meant, which had never been resolved. Unfortunately, the removal of the unclear wording has not provided the clarity which was needed. The scope of s. 213 remains unclear, and there are competing views as to whether i) the deletion of the words actually changed the law at all; and ii) what is meant by “part of an article”.

HHJ Melissa Clarke, sitting in the IPEC, has recently provided her analysis in a case concerning baby baths – Shnuggle Limited v Munchkin, Inc. The judge declined to answer the first question, saying, “It seems to me that now that the words ‘any aspect of’ have been excised from section 213(2) there is no longer any practical utility to considering the question “What is the difference between a ‘part’ and an ‘aspect’ of an article?”. The relevant question should now be only “Is this a design for ‘part’ of an article?”. In our view, that approach is sensible – given that the amendment is now over 5 years old, the meaning of the deleted words is of academic interest only, and what matters is what the current wording means.

Focusing therefore on the key question as to what the remaining words in s. 213 mean, the judge reviewed the authorities (including HHJ Hacon in DKH Retail Ltd v H Young Operations Ltd [2014] EWHC 4034 (IPEC) and the late Henry Carr J in Neptune (Europe) Limited v DeVol Kitchens Limited [2017] EWHC 2172 (Pat)) and concluded that “I consider that a part of an article for section 213(2) is an actual, but not abstract part which can be identified as such and which is not a trivial feature. Whether or not it is a trivial feature is a matter of fact which will need to be assessed in the context of the article as a whole”. She rejected the argument that a “part of an article” must be separately created or a separate component – it can be an integral component of an article, provided it is identifiable. The judge was therefore prepared to accept that the unshaded area shown below the line marked “AA” in the drawing below is a “part of an article”, notwithstanding that the overall bath is manufactured as a single piece.

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Previous judges have used the example of a teapot to illustrate the scope of UK registered design right. Clearly, design right can subsist in the overall teapot, and it has always been the case that it can subsist, separately, in the removable lid. If HHJ Melissa Clarke’s analysis is correct, it seems that design right can subsist in, say, the handle or spout or in the lower half of the body of the pot, notwithstanding that each of those features are integral to the pot itself. The prohibition on protection of “abstract parts” would seem, however, to prohibit protecting the combination of the end of the spout and the top of the handle but ignoring the bits inbetween – such a disembodied concept cannot be seen as a “part of an article”, even if (which is not clear) it would have been regarded as an “aspect” under the pre-2014 law.

The answer to the question posed in the title, therefore, is “It may be getting clearer, but a definitive judgment of the Court of Appeal is awaited”. Pending such determination, the position would appear to be that a “part of an article”:

  • Must be an actual, as opposed to abstract, part of the article
  • which can be identified as such
  • and is not a trivial feature
  • but need not be separately created or a separate component.

If that is correct, it is welcome news for designers, who will be able to protect not just overall articles and separable parts thereof (i.e. what is traditionally regarded as spare parts), but also integral but identifiable parts of an article.