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    Intellectual property

    Acquiescence: Estoppel: Must fit exclusion: Must match exclusion: Spare parts: Unregistered design right: Assessment of infringement: Vacuum cleaners: Copyright, Designs and Patents Act 1988: s.213(3) (b) (i) Copyright, Designs and Patents Act 1988.

    On the evidence the defendant manufacturer had infringed the unregistered design rights of the claimant manufacturer when it copied parts of the claimant’s vacuum cleaners, and estoppel and acquiescence were no bar to maintaining the action.

    The claimant (D) brought an action under the Copyright, Designs, and Patents Act 1988 claiming infringement of unregistered design right in respect of a number of spare parts for its vacuum cleaners against the defendant (Q). Q was one of the United Kingdom’s leading suppliers of “pattern parts”, which were duplicate spare parts for domestic appliances, and D was one of the UK’s leading manufacturers of vacuum cleaners. Q had produced commissioned and sold parts that were copies, or very close copies, of various vacuum cleaner parts produced by D. Q admitted copying the parts but submitted that (1) the “must fit” exception in s.213(3) (b) (i) of the Act applied to large areas of each of the parts; (2) the “must match” exception in s.213(b) (ii) applied to significant areas of most of the parts; (3) in most cases those parts of the designs were commonplace; (4) some aspects of some designs were mere surface decoration. Q further relied on estoppel or on waiver or acquiescence by D on the footing that D knew what Q was doing and did nothing to stop it, and that in reliance on that Q went ahead and produced more parts.

    HELD: (1) The words of the provision in s.213(3) (b) (i) of the Act did not have to be viewed particularly narrowly, or indeed particularly widely. It did not matter if there were two ways of achieving the necessary fit or connection between the subject article and the one to which it fitted. If the design chosen by the design right owner was a way of achieving that fit or interface, then it did not attract design right no matter how many alternative ways of achieving the same “fit” might be available. (2) When considering “must match” the court would apply s.213(b) (ii) by considering whether there was dependency of the kind, or to the extent, which would make the overall article in question radically different in appearance if the first article was not the share it was, Ford Motor Co Ltd’s Design Applications [1994] RPC 545 considered. That sort of consideration was inevitably one of fact and degree, and of impression. (3) “Commonplace” was not to be confused with
    lack of novelty. Where it was appropriate to consider “commonplace” the court would consider whether the design was commonplace in the UK, to which question the marketing of the other article or articles in which the design appeared would be relevant but not essential, Ultraframe UK Ltd v Clayton (2002) EWHC 2697 (Ch) applied. (4) Surface decoration was excluded from design right by s.213(3) (c) of the Act. There was a distinction between surface decoration and significant parts of the shape and configuration of the item, A Fulton Co Ltd v Grant Barnett & Co Ltd (2003) RPC 16 considered. As a matter of principle, Q appropriate seniority to bind D. On the evidence, there was no knowledge or acts which might otherwise have been encouragement at any sufficiently senior level. Q had infringed D’s design rights when it copied each of the parts which were in issue, and acquiescence or estoppel were no bar to D maintaining the instant action in respect of that infringement.

    Judgment for claimant.

    Dyson Ltd v Qualtex (UK) Ltd (2004)